MASTER 
NEGATIVE 


NO.  94 


COPYRIGHT  STATEMENT 


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Author: 


National  Biscuit  Company 


Title: 


Trade  mark  litigation 


Place: 


New  York 

Date: 

1915 


%'^T223-Z 


COLUMBIA  UNIVERSITY  LIBRARIES 
PRESERVATION 

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MASTER    NEGATIVE    # 


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National  biscuit  company • 

•••  Trade  mark  litigation;  opinions,  orders, 
injunctions  and  decrees  relating  to  unfair  compe- 
tition and  infringement  of  trade  marks.  5th  ed. 
^Hew  York,  national  biscuit  compan:/]  1915. 

233  p,   illus.   S&n  cm. 

At  head  of  title:  National  biscuit  company. 


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TRADE  MARK  UTIGATIOhl 


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Opinions,  Qrders,   ln]unctionsiH|i  D 
Relating  to  Unfair  Compe       "^  ~ 
Infringement  of  Traciel 


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LIBRARY 


School  of  Business 


SCHOOL  OF  BUSINESS 


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NATIONAL  BISCUIT  COMPANY 


TRADE  MARK  LITIGATION 


Opinions,  Orders,   Injunctions  and   Decrees 

Relating  to  Unfair  Competition  and 

Infringement  of  Trade  Marks 


Fifth  Edition 

1915 


CONTENTS. 


National  Biscuit  Company  v.  Thomas  and  Clarke  5 

National  Biscuit  Company  v.  Baker    II 

National  Biscuit  Company  v.  Kennedy    19 

National  Biscuit  Company  v,  Ohio  Baking  Com- 
pany      29 

National  Biscuit  Company  r.  Deininger    67 

National  Biscuit  Company  r.  Dake  Cracker  Com- 
pany    75 

National  Biscuit  Company  v.  Walter    85 

National  Biscuit  Company  r.  Swick   93 

National  Biscuit  Company  r.  Punchard Ill 

National  Biscuit  Company  v,  Hargrave  Biscuit 

Co 121 

National  Biscuit   Company  v.   Hammell   Cracker 

Co 131 

National  Biscuit  Company  v.  Whiteside 139 

National  Biscuit  Company  r.  Pacific  Coast  Biscuit 

Company   173 

Tables  of  Infringements  abandoned  without  suit...  229 


Northern  District  of  Illinois 
■   Southern  Division 


NATIONAL  BISCUIT  COMPANY     . 

Vomplatnant, 


v». 


ALBERT  V.  THOMAS  AND  ROBERT  D. 

CLARKE 

Defendants. 


IN  EQUITY 


DECREE 


OFFIELD,  TOWLE  &  LINTHICUM 
CHARLES  K.  OFFIELD 

For  Complainant. 

PEIRCE  &  FISHER 

JAMES  H.  PEIRCE 

For  Defendants. 


NATIONAL  BISCUIT  COMPANY   i?«.  THOMAS  AND   (iJkRKB 


NATIONAL  BISCUIT  COMPANY    i»«.  THOMAS  AND   CLARKE 


FINAL  DECREE. 


United  States  Circuit  Court, 

Northern  District  of  Illinois, 

Southern  Division. 

Monday,  April  17,  1899. 

Present:  Honorable  Christian  C.  Kohlsaat,  District 
Judge. 

National  Biscuit  Company, 

vs. 

Albert  V.  Thomas  and  Eobert  D. 

Clarke. 

This  day  came  the  complainant,  by  Charles  K.  OflSeld, 
of  the  firm  of  Offield,  Towle  &  Linthicum,  its  solicitors, 
and  of  counsel,  and  the  defendants  by  James  H.  Peirce, 
of  the  firm  of  Messrs.  Peirce  &  Fisher,  their  solicitors  and 
of  counsel,  and  thereupon  the  following  proceedings  were 
had: 

This  cause  coming  on  to  be  heard  upon  final  hearing,, 
upon  the  pleadings  and  affidavits  filed  herein,  and  the 
respective  counsel  being  heard  for  the  respective  parties 
thereon,  and  being  duly  considered,  it  is  therefore  or- 
dered, adjudged  and  decreed  as  follows : 

First:  That  the  said  word  or  name  **Uneeda"  is  a 
good  and  valid  Trade-mark  or  trade  name  for  biscuits, 
crackers  and  other  bakery  products,  and  that  the  title 
thereof,  and  the  entire  and  exclusive  right  in  the  use  of 
the  same  as  a  Trade-mark  or  trade  name,  vest  in  said 
complainant. 

Second:  That  the  package  and  wrapper  thereof  with 
the  border  and  parallelogram  arrangement  upon  the  four 
longitudinal  sides  thereof,  and  the  printed  matter  in  rela- 
tion thereto,  as  shown  by  *' Complainant 's  Exhibit,  Com- 
plainant's Package,  Trade-mark  and  Wrapper,"  are  the 


NATIONAL   BlSniT   COMPANY    vs.   THOMAS   AND   TI^ARKB 


ll 


NATIONAL   BISCriT  COMl'ANY    t>«.  THOMAS   AN1>   CLARKK 


FINAL  DEC  REE. 

United  States  Circuit  Court, 

Northern  District  of  Illinois, 

Southern  Division. 

Monday,  April  17,  1899. 

Prosoiit :  Honorable  Christian  C.  Kohlsaat,  District 
Judge. 

National  Biscuit  Company, 

vs. 

Albert  Y.  Thomas  and  Robert  D. 

Clarke. 

This  day  came  the  complainant,  by  Charles  K.  Offield,. 
of  the  firm  of  Offield,  Towle  &  Linthicum,  its  solicitors, 
and  of  counsel,  and  the  defendants  by  James  H.  Peirce, 
of  the  firm  of  Messrs.  Peirce  &  Fisher,  their  solicitors  and 
of  counsel,  and  thereupon  the  following  proceedings  were 
had : 

This  cause  coming  on  to  be  heard  upon  final  hearing, 
upon  the  pleadings  and  affidavits  filed  herein,  and  the 
respective  counsel  being  heard  for  the  respective  parties 
thereon,  and  being  duly  considered,  it  is  therefore  or- 
dered, adjudged  and  decreed  as  follows : 

First:  That  the  said  word  or  name  **Uneeda''  is  a 
good  and  valid  Trade-mark  or  trade  name  for  biscuits, 
crackers  and  other  bakery  products,  and  that  the  title 
thereof,  and  the  entire  and  exclusive  right  in  the  use  of 
the  same  as  a  Trade-mark  or  trade  name,  vest  in  said 
complainant. 

Second:  That  the  package  and  wrapper  thereof  with 
the  border  and  parallelogram  arrangement  upon  the  four 
longitudinal  sides  thereof,  and  the  printed  matter  in  rela- 
tion thereto,  as  shown  by  ** Complainant's  Exhibit,  Com- 
plainant's Package,  Trade-mark  and  Wrapper,"  are  the 


>< 


8 


NATIONAL  BISCUIT   COMPANY   wt,  THOMAS  AND  CLARKE 


/ 


V 


equitable  property,  wrapper  and  label  arrangement  of 
the  complainant  herein,  in  connection  with  the  manufac- 
ture and  sale  of  biscuits,  crackers  and  other  bakery 
products. 

Third:  That  the  defendants  have  infringed  upon  and 
violated  the  rights  of  the  complainant  by  the  use  of  the 
name  or  word  ^^Uwanta"  as  a  close  imitation  and  simula- 
tion of  the  Trade-mark  or  name  '*Uneeda"  of  the  com- 
plainant, and  have  closely  imitated  and  simulated  the 
package  of  the  said  complainant  as  to  size  and  form,  and 
the  wrapper  thereof  as  to  arrangement  of  border,  respec- 
I  tive  parallelograms  and  printed  matter,  in  relation  there- 
\  to,  in  the  sale  of  the  biscuits  and  crackers  of  said  de- 
fendants. 

Fourth:   That  the  said  defendants,  Albert  V.  Thomas 
and  Robert  D.  Clarke,  and  each  of  them,  and  their  respec- 
tive agents,  servants  and  employes,  and  each  of  them,  be 
and  hereby  are  perpetually  enjoined  from  affixing,  using 
or  causing  or  permitting  to  be  used  or  affixed  to  or  upon 
any  biscuits,  crackers  or  other  bakery  products  or  pack- 
ages manufactured  by  them,  or  bought  or  procured  or  sold 
by  them  or  for  them  or  either  of  them,  or  in  which  they  are 
in  any  manner  interested,  the  word  **Uneeda''  or  the 
word  **Uwanta"  or  any  word  or  synonym  thereof  or  any 
word  calculated  to  deceive  or  mislead,  or  any  word  color- 
ably  different  therefrom,  and  from  affixing  to  any  pack- 
age, biscuit,  crackers  or  bakery  products  any  wrapper, 
label  or  other  covering  having  thereon  a   border  and 
parallelogram  arrangement  and  accompanying  letters  in 
substantial  imitation  of  the  wrapper,  label  and  package 
or  box  arrangement  of  the  said  complainant,  and  only 
colorably  different  therefrom,  or  from  using  any  box  or 
package    construction,   wrapper   or   label   arrangement 
thereof,  in  the  sale  of  biscuits,  crackers  and  other  bakery 
products,  so  contrived  as  to  lead  to  the  belief  or  to  be 
calculated  to  lead  to  the  belief,  or  to  be  liable  to  cause 
the  public  to  believe,  that  the  biscuits  or  crackers  con- 


NATIONAL   BISCUIT  COMPANY   r«.   THOMAS  AND  CLARKE  51 

tained  in  such  box,  packages,  wrappers  or  other  cover- 
ing, was  manufactured  or  sold  by  the  complainant. 

Fifth:  It  further  appearing  to  the  court  that  the  said 
parties  have  agreed  to  settle  the  question  of  damages  to 
the  complainant  and  profits  to  the  defendants  out  of 
court,  within  thirty  days  hereafter,  no  reference  to  Mas- 
ter for  an  accounting  is  at  this  time  made. 

Sixth:  It  is  further  ordered,  adjudged  and  decreed, 
that  the  defendants  pay  the  costs  herein  to  be  taxed,  and 
that  complainant  have  execution  therefor. 

Northern  District  of  Illinois,]  gg 
Northern   Division.  j 

I,  S.  W.  Bumham,  CTerk  of  the  Circuit  Court  of  the 
United  States,  for  said  Northern  District  of  Illinois,  do 
hereby  certify  the  above  and  foregoing  to  be  a  true  and 
correct  copy  of  the  Decree  entered  of  record  in  said  Court 
on  the  17th  day  of  April,  A.  D.  1899,  in  the  cause  wherein 
National  Biscuit  Company,  is  the  complainant  and  Albert 
V.  Thomas  and  Eobert  D.  Clarke  are  the  defendants,  as 
the  same  appears  from  the  original  thereof  now  remain- 
ing in  my  custody  and  control. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court,  at  my  office  in  Chicago, 
in  said  District,  this  18th  day  of  April,  A.  D.  1899. 

S.  W.   BURNHAM, 

Clerk. 


Oltrrmt  CUnurt  of  ttje  Unttrh  ^tati^a 


Southern  District  of  New  York 


NATIONAL  BISCUIT  COMPANY 

Coniitloinattt, 


r«. 


> 


HENRY  D.  BAKER  and  JOHN  P.  BAKER 

Oefiitilants. 


IN   EQUITY 


OPINION  AND  ORDER  GRANTING 

INTUNCTTON 


OFFIELD,  TOWLE  &  LIXTHICUM 
CHARLES  K.  OFFIELD 

For  Complainant. 

BRIESEX  &  KXAUTH 
ARTHUR  V.  BRIESEX 

For  Defendants. 


12 


NATIONAL  BISCUIT  COMPANY   vs.  BAKER 


NATIONAL  BISCUIT  COMPANY  vs.  BAKER 


13 


NATIONAL  BISCUIT  COMPANY  vs.  BAKER  et  al. 
(Circuit  Court  of  the   United  States,  Southern  District  New  York, 

June  27,   1899.) 

Unfair  Competition— Preliminary  Injunction. 

**Uneeda,"  as  applied  to  a  biscuit,  is  a  proper  trade-mark;  and  the 
proprietor  is  entitled  to  an  injunction  against  the  use  of  "Iwanta" 
by  another  manufacturer  as  the  name  of  a  similar  biscuit  put  up  and 
sold  to  the  trade  in  packages  so  similar  as  to  be  calculated  to  deceive 
consumers. 

Motion  for  preliminary  injunction  against  sellers  of  al- 
leged infringing  goods ;  the  action  being  defended  by  the 
Ward-Mackey  Company,  of  Pittsburg,  Pa.,  makers  of  the 
same. 

Charles  K.  Offield,  for  the  motion. 
Arthur  v.  Briesen,  opposed. 

LACOMBE,  Circuit  Judge.  This  case  is  too  plain  to 
waste  many  words  over  it,— the  principles  of  trade-mark 
infringement  and  of  unfair  competition  have  been  so  often 
discussed  in  this  circuit.  That  **Uneeda,''  as  applied  to 
biscuit,  is  a  proper  trade-mark,  and  that  complainant  is 
entitled  to  its  exclusive  use  in  that  connection,  is  hardly 
disputed.  That  it  has  been  most  extensively  advertised, 
presumably  at  great  expense,  is  matter  of  common  knowl- 
edge, and  is  asserted  in  the  moving  papers.  Defendants 
present  the  usual  voluminous  bundle  of  affidavits  by  per- 
sons in  the  trade  to  the  effect  that  in  their  opinion  no  one 
is  likely  to  mistake  defendants'  biscuit  for  complainant's. 
As  has  been  often  pointed  out  before,  it  makes  no  differ- 

J^^^  to  what  constitutes  unfair  competition,  see  note  to  Scheuer  v. 
MuIIer,  20  C.  C  A.  165,  and  supplementary  thereto,  under  same  title 
note  to  Lare  v.  Harper,  30  C  C.  A.  376. 


12 


NATIONAL  BISCMT  TOM  TAN  Y   vs.  BAKKR 


NATIONAL  BLSCl  IT  COMPANY   vs.  BAKER 


13 


NATIONAL  BISCUIT  COMPANY  vs.  BAKER  et  al. 
(Circuit  Court  of  the    United  States,  Southern  District  New  York, 

June  27,   1899.) 

Unfair  Competition — Preliminary  Injunction. 

"Uneeda,"  as  applied  to  a  biscuit,  is  a  proper  trade-mark;  and  the 
proprietor  is  entitled  to  an  injunction  against  the  use  of  "Iwanta" 
by  another  manufacturer  as  the  name  of  a  similar  biscuit  put  up  and 
sold  to  the  trade  in  packages  so  similar  as  to  be  calculated  to  deceive 
consumers. 

Motion  for  preliminary  injunction  against  sellers  of  al- 
leged infringing  goods;  the  action  being  defended  by  the 
Ward-Mackey  Company,  of  Pittsburg,  Pa.,  makers  of  the 
same. 

Charles  K.  Offield,  for  the  motion. 
Arthur  v.  Briesen,  opposed. 

LACOMBE,  Circuit  Judge.  This  case  is  too  plain  to 
waste  many  words  over  it,— the  principles  of  trade-mark 
infringement  and  of  unfair  competition  have  been  so  often 
discussed  in  this  circuit.  That  **Uneeda,'^  as  applied  to 
biscuit,  is  a  proper  trade-mark,  and  that  complainant  is 
entitled  to  its  exclusive  use  in  that  connection,  is  hardly 
disputed.  That  it  has  been  most  extensively  advertised, 
presumably  at  great  expense,  is  matter  of  common  knowl- 
edge, and  is  asserted  in  the  moving  papers.  Defendants 
present  the  usual  voluminous  bundle  of  affidavits  by  per- 
sons in  the  trade  to  the  effect  that  in  their  opinion  no  one 
is  likely  to  mistake  defendants'  biscuit  for  complainant's. 
As  has  been  often  pointed  out  before,  it  makes  no  differ- 

x/'V  to  what  constitutes  unfair  competition,  see  note  to  Scheuer  v. 
Muller  20  C.  C  A.  165,  and  supplementary  thereto,  under  same  title 
note  to  Lare  v.  Harper,  30  C  C.  A.  376. 


14 


NATIONAL  BISCUIT  COMPANY  vs.  BAKER 


/  ence  that  dealers  in  the  article  are  not  deceived.  No  one 
Y^xpects  that  they  will  be.  It  is  the  probable  experience  of 
[^the  consumer  that  the  court  considers.  Here,  too,  we  have 
the  manufacturer  of  the  articles  complained  of,  who  ex- 
plains, as  usual,  that,  in  adopting  a  trade  name  by  which 
to  identify  his  own  product,  he  has  been  most  **  careful 
not  to  trespass  on  any  rights''  of  complainant,  and  that 
** after  considerable  thought"  he  selected  a  name  which 
should  make  the  difference  between  his  goods  and  com- 
plainant's "distinct  and  plain,  so  that  there  could  be  no 
possibility  of  mistake."  It  is  a  curious  fact  that  so  many 
manufacturers  of  proprietary  articles,  when  confronted 
with  some  well-advertised  trade  name  or  mark  of  a  rival 
manufacturer,  seem  to  find  their  inventive  faculties  so 
singularly  unresponsive  to  their  efforts  to  differentiate. 
Thus,  in  one  case,  with  the  word  ''Cottolene"  before  him, 
defendant's  best  effort  at  differentiation  resulted  in  ''Cot- 
toleo,"  and  '* Mongolia"  seemed  to  another  defendant  en- 
tirely unlike  '^Magnolia."  The  manufacturer  of  the 
articles  which  defendants  in  the  case  at  bar  are  selling 
seems  to  have  had  no  better  luck,  for,  with  the  word 
*'Uneeda"  before  him,  his  device  to  avoid  confusion  was 
the  adoption  of  the  word  '*Iwanta."  The  incessant  use 
of  the  personal  pronouns  in  daily  speech  has  associated 
in  every  one's  mind  the  sounds  represented  by  the  letters 
**I"  and  *'U";  the  two  words  are  of  precisely  the  same 
length;  both  end  with  the  same  letter,  **  A";  and  both  ex- 
press the  same  idea,  namely,  that  the  prospective  i)ur- 
chaser's  personal  comfort  would  be  promoted  by  the  ac- 
quisition of  a  biscuit.  There  are,  as  also  is  usual,  a  num- 
ber of  minor  differences  between  the  forms  and  the  dress 
of  the  two  packages,  which  are  expatiated  upon  in 
the  affidavits  and  the  brief;  but  no  one  can  look 
at  both  packages  without  perceiving  that  there  are 
strong  resemblances,  which  could  easily  have  been 
avoided  had  there  been  an  honest  effort  to 
^give    defendants'    goods    a    distinctive    dress.      Both 


I 


NATIONAL  BISCUIT  COMPANY  vs.  BAKER 


15 


-. 


name  and  dress  are  clearly  calculated  to  mislead,  and  the 
statements  that  both  were  adopted  with  an  eye  single  to 
differentiation  strain  the  credulity  of  the  court  beyond  the 
breaking  point.  Complainant  may  take  a  preliminary  in- 
junction against  the  use  of  the  trade-name  ' '  Iwanta, "  and 
of  the  present  style  of  package ;  also  against  similar  col- 
orable imitations  of  complainant's  trade-name,  **Unee- 
da,"  and  of  his  style  of  package. 

95  Fed.  Eep.,  135. 


16 


NATIONAL  BISCUIT  COMPANY  vs.  BAKBE 


INJUNCTION  ORDEK. 

United  States  Circuit  Court. 
Southern  District  of  New  York. 


National  Biscuit  Company, 

Complainant, 

vs. 
Henry   D.   Baker    and   John   P, 

Baker, 

Defendants. 


In  Equity. 


J 


Complainant  having  moved  the  Court  that  a  prelim- 
inary injunction  issue  against  the  above-named  defend- 
ants in  accordance  with  the  prayer  of  the  bill  of  complaint 
herein,  and  Charles  K.  Offield,  Esq.,  of  counsel  for  com- 
plainant, having  been  heard  in  support  of  the  motion,  and 
Arthur  v.  Briesen,  Esq.,  of  counsel  for  defendants,  having 
been  heard  in  opposition ;  it  is,  on  motion  of  Offield,  Towle 
&  Linthicum,  complainant's  solicitors. 

Ordered  that  the  said  motion  be  and  the  same  hereby  is 
granted  and  that  an  injunction  issue  against  the  said  de- 
fendants Henry  D.  Baker  and  John  P.  Baker  and  each  of 
them  and  their  respective  agents,  servants  and  employees 
and  each  of  them  enjoining  and  restraining  them  until  the 
further  order  of  this  court  from  affixing,  using  or  causing 
or  permitting  to  be  used  or  affixed  to  or  upon  any  biscuits, 
crackers  or  other  bakery  products  or  packages  thereof, 
handled  or  sold  by  them,  or  bought  or  procured  to  be  sold 
by  them,  or  for  them,  or  either  of  them,  or  in  which  they 
are  in  any  manner  interested,  the  word  ''Iwanta"  or 
**Uneeda",  or  against  similar  colorable  imitation  thereof, 
or  from  affixing  to  any  package  of  biscuit,  crackers,  or 
other  bakery  products,  any  wrapper,  label  or  other  cover- 
ing in  substantial  imitation  of  the  wrapper,  label  and 


NATIONAL  BISCUIT  COMPANY  V8,  BAKER 


17 


package  of  said  complainant,  or  any  similar  colorable  imi- 
tation of  complainant's  style  of  package,  so  contrived  as 
to  lead  to  the  belief  or  to  be  calculated  to  lead  to  the  belief 
or  to  be  liable  to  cause  the  public  to  believe  that  the  biscuit 
or  crackers  contained  in  such  package,  wrapper  or  other 
covering  are  manufactured  and  sold  by  the  complainant. 

Dated  New  York,  Aug.  11,  1899. 

E.  Henry  Lacombe. 
U.  8,  Circuit  Judge. 

(Endorsed):  United  States  Circuit  Court,  Southern 
District  of  New  York.— ISTational  Biscuit  Company,  Com- 
plainant, vs.  Henry  D.  Baker  and  John  P.  Baker,  Defend- 
ants.—Order.— Briesen  &  Knauth,  Solicitors  for  Defend- 
ants, 229  Broadway,  Borough  of  Manhattan,  New  York. 
—IT.  S.  Circuit  Court,  Filed  Aug.  11,  1899,  John  A. 
Shields,  Clerk. 


United  States  of  America,  | 

Southern  District  of  New  York.C     ' 

I,  John  A.  Shields,  clerk  of  the  Circuit  Court  of  the 
United  States  in  and  for  the  Second  Circuit  and  Southern 
District  of  New  York, 

Do  Hereby  Certify  that  I  have  compared  the  preceding 
with  the  original  Order  granting  Injunction  in  the  cause 
entitled  National  Biscuit  Company,  Complainant,  vs. 
Henry  D.  Baker  and  John  P.  Baker,  Defendants,  on  file 


18 


NATIONAL  BISCUIT  COMPANY  r«.  BAKEK 


and  of  record  in  my  office,  and  that  the  same  is  a  true  and 
correct  transcript  therefrom,  and  of  the  whole  of  said 
original. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  court,  at  the  City  of  New  York, 
in  tlie  District  and  Circuit  ahove-named,  this  27tli  day  of 
May  in  the  year  of  our  Lord  one  thousand  nine  hundred 
and  four,  and  of  the  Independence  of  the  United  States 
the  one  hundred  and  twentv-ei2:hth. 

John  A.  Shields, 

Clerk. 


Oltrruit  Olourt  of  %  MniUh  0tatw 

XoRTHERx  District  of  Illinois 


XoRTHERN  Division 


NATIONAL  BISCUIT  COMPANY  ^ 

Oomplalvant, 

V9. 


THEODORE   WEISE   AND   JOHN   P. 
KENNEDY, 


> 


IN  EQUITY 


ORDER,  IXJL'XCTIOX  AND  ORDER 
.MAKING  IXJUXCTIOX  PERPETUAL 


OFFIELD,  TOWLE  &  LIXTHICU.M 

^'or  Complainant. 

ARCHIBALD  CATTEL 

For  Defendants. 


NATIONAL  BISCUIT  COMPANY  vs.   KENNEDY 


21 


INJUNCTION  ORDER. 

Circuit  Court  of  the  United  States, 

Northern  District  of  Illinois, 

Northern  Division. 

July  5,  1900, 

Present,  Hon.  Christian  C.  Kolilsaat,  District  Judge. 

National  Biscuit  Company,    ^  T».n  /»      t  i?  • 
25,598  vs.  ^     ^ '      I  Bill  for  Infringement 

Theodore  Weise  and  John  P.    f     ^^^uf'^^^^'u/'''^ 
Kennedy.  J      Equitable  Rights. 

This  case  coming  on  to  be  heard  upon  motion  for  pre- 
liminary injunction  upon  pleadings  and  affidavits  filed 
and  exhibits  referred  to,  and  having  been  duly  heard 
and  considered,  it  is  ordered,  adjudged  and  decreed  as 
follows : 

First:  That  the  said  complainant  has  good  title  and 
right  in  and  to  the  said  trade-mark  or  name  ''Ken- 
nedy's,'' or  ''Kennedy's  Biscuit''  and  "Kennedy's  City 
Soda  Crackers"  as  applied  to  bakery  products,  and  in 
and  to  the  particular  and  special  label,  package  or  carton 
associated  with  the  sale  thereof  as  identified  by  the  bill 
of  complaint  and  filed  herein. 

Second:  That  the  said  defendants  have  violated  and 
infringed  upon  said  complainant 's  right,  title  and  interest 
in  and  to  said  trade-name,  marks  or  words  "Kennedy's," 
"Kennedy's  Biscuit"  and  "Kennedy's  Cit}^  Soda  Crack- 
ers," and  in  and  to  the  label,  carton  and  package  identi- 
fied therewith. 

Third:  That  the  said  defendants,  and  each  of  them, 
their  servants  and  agents,  and  all  claiming  or  holding 
through  or  under  them,  be  until  further  order  of  the 
court  enjoined  and  restrained  from  in  any  manner  what- 


22 


NATIONAL   BISCUIT   COMrANY    vs.    KENNEDY 


I 


soever  making  use  of  the  words  *' Kennedy 's, "  '*  Ken- 
nedy's City  Soda  Crackers''  or  ** Kennedy's  Biscuit,"  or 
any  words  substantially  like  the  same  as  the  name  or 
designation,  or  as  any  part  of  the  name  or  designation, 
of  any  bakery  products  whatsoever  not  by  or  for  the 
complainant  manufactured;   and  from  in  any  manner 
whatsoever   making   use    of   the   words    ** Kennedy's," 
** Kennedy's  City  Soda  Crackers"  or  *' Kennedy's  Bis- 
cuit," or  any  words  substantially  like  the  same,  as  the 
name  or  designation,  or  as  any  part  of  the  name  or  de- 
signation, of  any  bakery  products  whatsoever  not  manu- 
factured by  or  for  the  complainant,  which  shall  be  put  up 
in  carton  like  those  hereinbefore  described  as  the  pack- 
ages by  the  defendants  used  and  availed  of,  and  other- 
wise in  every  way  from  making  use  in  connection  with 
the  manufacture  or  sale  of  bakery  products  whatsoever,, 
not  of  the  complainant's  production,  of  packages  whick 
shall  be  so  nearly  like  the  complainant's  packages  here- 
inbefore described  as  to  be  calculated  to  mislead;  and 
otherwise  in  every  way  enjoining  and  restraining  the 
said  defendants  from  fraudulently  making  use  of  the 
words  ''Kennedy's"  ''Kennedy's  City  Soda  Crackers" 
or  "Kennedv's  Biscuit"  in  connection  with  tlie  sale  of 
bakery  products,  and  from  doing  any  act  or  tbing  what- 
soever that  shall  be  calculated  to  cause  any  bakery  prod- 
ucts not  manufactured  by  the  complainant  to  be  offered 
or  sold  as  "Kennedy's  Biscuit"  or  "Kennedy's  City 
Soda  Crackers,"  or  as  bakery  products  or  crackers  manu- 
factured by  or  for  the  complainant. 


NATIONAL   BISCUIT  COMPANY   vs.   KENNEDY 


23: 


NoRTHEBX  District  of  Illinois,! 

Northern  Division.  j  ^®* 

I,  Marshall  E.  Sampsell,  clerk  of  the  Circuit  Court  of 
the  United  States  for  said  Northern  District  of  Illinois, 
do  hereby  certify  the  above  and  foregoing  to  be  a  true 
and  complete  copy  of  the  order  entered  of  record  in  said 
court  on  the  5th  day  of  July,  A.  D.  1900,  in  the  cause 
wherein  National  Biscuit  Company  is  the  complainant 
and  Theodore  Weise  et  al.  are  the  defendants,  as  the 
same  appears  from  the  original  records  thereof  now  re-^ 
maining  in  my  custody  and  control. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  court  at  my  office  in  Chicago- 
in  said  district,  this  26th  dav  of  Mav,  A.  D.  1904. 

Marshall  E.  Sampsell, 

Clerks 


24 


NATIONAL  BISCUIT  COMrANY   vs.   KENNEDY 


NATIONAL  BISCUIT  COMPANY    is.   KENNEDY 


25 


I 
1 


INJUNCTION. 

Circuit  Court  of  the  United  States  of  America,! 

Northern  District  of  Illinois,  j-ss. 

Northern  Division.  J 

THE  UNITED  STATES  OF  AMERICA, 

To  Theodore  Weise  and  John  P.  Kennedy  and  to  your 
Counselors,  Attorneys,  Solicitors,  Trustees,  Agents, 
Clerks,  Employes,  Servants  and  Workmen,  and  to  each 
and  every  of  you,  Greeting: 

Whereas,  It  liatli  been  represented  to  the  Judges  of 
our  Circuit  Court  of  the  United  States  for  the  Northern 
Division  of  the  Northern  District  of  Illinois  in  Chan- 
cery sitting,  on  the  part  of  National   Biscuit   Company, 
complainant,  in  its  certain  bill  of  complaint,  exhibited  in 
our  said  Circuit  Court,  on  the  Chancery  side  thereof, 
before  the  Judges  of  said  Court,  against  you,  the  said 
Theodore  Weise  and  John  P.  Kennedy,  to  be  relieved 
touching  the  matters  complained  of.    In  which  said  bill 
it  is  stated,  among  other  things,  that  you  are  combining 
and  confederating  with  others  to  injure  the  complainant 
touching  the  matters  set  forth  in  said  bill,  and  that  your 
actings  and  doings  in  the  premises  are  contraiy  to  equity 
and  good  conscience.    And  it  being  ordered  that  a  Writ 
of  Preliminary  Injunction  issue  out  of  said  court,  upon 
said  bill,  enjoining  and  restraining  you,  and  each  of  you, 
as  prayed  for  in  said  bill ;  We  therefore,  in  consideration 
thereof,  and  of  the  particular  matters  in  said  bill  set 
forth,  do  strictly  command  you,  the  said  Theodore  Weise 
and  John  P.  Kennedy,  your  Counselors,  Attorneys,  Solici- 
tors, Trustees,  Agents,  Clerks,  Employes,  Servants  and 
Workmen,  and  each  and  every  of  you,  that  you  do  abso- 
lutely desist  AND  REFRAIN  FROM  iu  auy  mauucr  whatso- 


ever making  use  of  the  words  **  Kennedy's,''  * 'Kennedy's 
City  Soda  Crackers"  or  *' Kennedy's  Biscuit,"  or  any 
words  substantially  like  the  same  as  the  name  or  desig- 
nation, or  as  any  part  of  the  name  or  designation,  of  any 
bakery  products  whatsoever  not  by  or  for  the  complain- 
ant manufactured ;  and  from  in  any  manner  whatsoever 
making  use    of  the  words    *' Kennedy's,"    ** Kennedy's 
City  Soda  Crackers"  or  ** Kennedy's  Biscuit,"  or  any 
words  substantially  like  the  same,  as  the  name  or  desig- 
nation,  or  as  any  part   of  the  name   or   designation, 
of     any     bakery     products     whatsoever     not     manu- 
factured by  or  for  the  complainant,  which  shall  be  put  up 
in  a  carton  like  those  hereinbefore  described  as  the  pack- 
ages by  the  defendants  used  and  availed  of,  and  other- 
wise in  every  way  from  making  use  in  connection  with  the 
manufacture  or  sale  of  bakery  products  whatsoever,  not 
of  the  complainant 's  production,  of  packages  which  shall 
be  so  nearly  like  the  complainant's  packages  hereinbe- 
fore described  as  to  be  calculated  to  mislead ;  and  other- 
wise in  every  way  enjoining  and  restraining  the  said  de- 
fendants from  fraudulently   making  use  of  the   words 
*4^ennedy^s,"    '^Kennedy's    City    Soda  Crackers"    or 
'^Kennedy's  Biscuit"   in   connection    with   the    sale  of 
bakery  products ;  and  from  doing  any  act  or  thing  what- 
soever   that    shall    be    calculated    to  cause  any  bakery 
products  not  manufactured  by  the  complainant  to  be  of- 
fered or  sold  as  *' Kennedy's  Biscuit"  or  '^ Kennedy's 
City  Soda  Crackers,"  or  as  bakery  products  or  crackers 
manufactured  by  or  for  the  complainant,  until  this  Hon- 
orable Court,  in  Chancery  sitting,  shall  make  other  order 
to  the  contrary.    Hereof  fail  not,  under  penalty  of  what 
the  law  directs. 

To  the  Marshal  of  the  Northern  District  of  Illinois, 
to  execute,  and  return  in  due  form  of  law. 

Witness,  the  Hon.  Melville  W.  Fuller,  Chief  Justice  of 
the  United  States  of  America,  at  Chicago,  in  said  Dis- 
trict, this  5th  day  of  July,  in  the  year  of  our  Lord  one 


26 


NATIONAL  BISCUIT  COMPANY    is.   KENNEDY 


NATIONAL  BISCUIT  COMPANY  vs.  KENNEDY 


27 


thousand  nine  Imndred  and  of  our  Independence  the  one 
hundred  and  twenty-fifth  year. 

S.  W.   BURNHAM, 

Clerk, 


Northern  District  of  Illinois,| 
Northern   Division.  ] 

I,  Marshall  E.  Sampsell,  Clerk  of  the  Circuit  Court  of 
the  United  States  for  said  Northern  District  of  Illinois, 
do  hereby  certify  the  above  and  foregoing  to  be  a  true 
and  complete  copy  of  the  injunction  writ,  filed  in  said 
court  on  the  8th  day  of  July,  A.  D.  1904,  in  the  cause 
wherein  National  Biscuit  Company,  is  the  complainant 
and  Theodore  Weise  ei  al.  are  the  defendants,  as  the 
same  appears  from  the  original  now  remaining  in  my 
custody  and  control. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court  at  my  office  in  Chicago,, 
in  said  District,  this  8th  day  of  July,  A.  D.  1904. 

Marshall  E.  Sampsell, 

Clerk. 


ORDER  MAKING  INJUNCTION  PERMANENT. 

Circuit  Court  of  the  United  States, 

Northern  District  of  Illinois 

Northern  Division. 

June  5,  1902. 

Present,  Hon.  Christian  C.  Kohlsaat,  District  Judge. 


National  Biscuit  Companv 
25,598  vs, 

Theodore   Weise   and    John   P 
Kennedy. 


>v 


7 


Bill  for  Infringement 
of  Trade-Mark  and 
Equitable  Rights. 


This  cause  coming  on  to  be  heard  upon  the  pleadings  as 
Med  herein,  Messrs.  Offield,  Towle  &  Linthicum  appearing 
as  solicitors  and  of  counsel  for  said  complainant  the 
National  Biscuit  Company,  Mr.  Archibald  Cattel  appear- 
ing as  solicitor  and  of  counsel  for  the  said  defendants 
Theodore  Weise  and  John  P.  Kennedy,  and  it  appearing 
to  the  court  that  the  defendants  do  not  desire  further  to 
contest  this  action,  and  that  they  have  settled  with  the 
complainant  for  the  damages,  profits  and  costs  arising 
out  of  the  acts  complained  of,  and  that  nothing  remains 
as  to  said  litigation  except  as  to  the  subject-matter  of  the 
injunction.  It  is  therefore  ordered,  adjudged  and  decreed, 
as  follows,  VIZ. : 

That  the  Interlondory  injunction  heretofore  issued  and 
?!Grved  upon  the  defendants  in  this  cause  be,  and  the  same 
hereby  is,  made  perpetual,  and  that  this  decree  be  entered 
and  stand  as  a  final  decree  in  the  above  cause. 


28 


NATIONAL  BISCUIT  COMPANY  vs.  KENNEDY 


Northern  District  of  Illinois,!  gg^ 
Northern  Division.  j 

I,  Marshall  E.  Sampsell,  clerk  of  the  Circuit  Court  of 
the  United  States,  for  said  Northern  District  of  Illi- 
nois, do  hereby  certify  the  above  and  foregoing  to  be  a 
true  and  complete  copy  of  the  order  entered  of  record  in 
said  court  on  the  5th  day  of  June,  A.  D.  1902,  in  the  cause 
wherein  National  Biscuit  Company  is  the  complainant  and 
Theodore  Weise  et  al.  are  the  defendants,  as  the  same 
appears  from  the  original  records  thereof  now  remaining 
in  my  custody  and  control. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  court  at  my  office  in  Chicago, 
in  said  District,  this  26th  day  of  May,  A.  D.  1904. 

Marshall  E.  Sampsell, 

Clerk. 


CUtrrmt  Olimrt  nf  %  Itiitrh  ^tatea 

Northern  District  of  Ohio 
Eastern  Division 


NATIONAL  BISCUIT  COMPANY  -n 

Complainant, 

V9. 


THE  OHIO  BAKING  COMPANY,  STEPHEN 
C.  MORRIS  and  GEORGE  E.  COLLINGS 

J^rff  ndants. 


> 


IN  EQUITY 
No.  6131 


OPINION  AND  DECREE 


SQUIRE,  SANDERS  &  DEMPSEY 
OFFIELD,  TOWLE  &  LINTHICUM 
EARL  D.  BABST 

for  Complainant. 

BANNING  &  BANNING 
BENJAMIN  C.  STARR 

For  Defendants. 


so  NATIONAL  BISCUIT  COMPANY   rs.  OHIO  BAKING   COMPANY 


SODA  CFi' ACKERS, 


SODA  ER ACKERS 


NATIONAL  BISCUIT  COMPANY  v%,  OHIO  BAKING  COMPANY 


31 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY  et  AL. 

(Circuit  Court  of  the  United  States.  Northern  District  Ohio,  Eastern 

Division.     December  21,   1900.) 

No.  6131. 

1.     Unfair  Competition — Imitation  of  Packages. 

While  a  defendant  may  have  the  right  to  use  every  one  of  the 
elements  entering  into  complainant's  trade-mark  and  packages  if 
used  separately,  yet  his  use  of  the  same  in  combination,  for  the  evi- 
dent purpose  of  imitating  in  appearance  complainant's  packages, 
constitutes  unfair  competition. 

In  Equity.  On  motion  for  preliminary  injunction.  For 
opinion  on  appeal,  see  127  Fed.,  116. 

Squire,  Sanders  &  Dempsey,  Offield,  Towle  &  Linthicum, 
and  Earl  D.  Babst,  for  complainant. 

Banning  &  Banning  and  Benjamin  C.  Starr,  for  defend- 
ants. 

WANTY,  District  Judge.  In  this  case  a  motion  for  a 
preliminary  injunction  has  heretofore  been  filed,  and  was 
argued  the  other  day,  and  I  have  come  to  a  conclusion  in 
the  matter.  The  bill  in  this  case  was  filed  to  restrain  the 
defendants  from  infringing  the  complainant's  trade-mark 
and  to  restrain  fraudulent  competition  in  imitating  the 
complainant's  packages  or  cartons  in  size  and  color  and 
general  appearance.  The  defendants  claim  that  they  have 
the  right  to  use  the  straight  lines  and  curves  in  a  trade- 
mark, that  they  have  the  right  to  use  the  word  ^'seal," 
that  they  have  the  right  to  use  white  lines  on  a  red  back- 
ground, and  that  they  have  the  right  to  use  cartons  of  a 
particular  size,  and  that  they  have  the  right  to  use  the 


Hi  Unfair  competition,  see  notes  to   Scheuer  v.  Muller,  20  C.   C.  A. 
165 ;  Lare  v.  Harper  &  Bros.,  30  C.  C.  A.  376. 


-30 


NAIIONAL   r.ISCriT  (  O.Ml'ANV    r.s.   OHIO   BAKIN(;    COMPANY 


S^Xi  K  \L^  K^Yv^Wb 


SODA  ER ACKERS 


NATIONAL  BISCL  IT  COMPANY   i «.  01110  BAKING  COMPANY 


31 


\ 


NATIONAL  BISCIIT  COMPANY    r».  OHIO  BAKIN(;  COMPANY  et  al. 

(Circuit  Court  of  the  United  States.  Northern  District  Ohio,  Eastern 

Division.      December   21,    1900.) 

No.  6131. 

1.      Unfair  Competition — Imitation  of  Packages. 

While  a  defendant  may  have  the  right  to  use  every  one  of  the 
elements  entering  into  complainant's  trade-mark  and  packages  if 
used  separately,  yet  his  use  of  the  same  in  combination,  for  the  evi- 
dent purpose  of  imitating  in  appearance  complainant's  packages, 
constitutes  unfair  competition. 

In  Equity.  On  motion  for  preliminary  injunction.  For 
opinion  on  appeal,  see  127  Fed.,  116. 

Squire,  Sanders  &  Dempsey,  Offield,  Towle  &  Lintliicum, 
and  Earl  D.  Babst,  for  complainant. 

Banning  &  Banning  and  Benjamin  C.  Starr,  for  defend- 
ants. 

AYAXTY,  District  Judge.  In  this  case  a  motion  for  a 
preliminary  injunction  has  heretofore  been  filed,  and  was 
argued  the  other  day,  and  I  have  come  to  a  conclusion  in 
the  matter.  The  bill  in  this  case  was  filed  to  restrain  the 
defendants  from  infringing  the  complainant's  trade-mark 
and  to  restrain  fraudulent  competition  in  imitating  the 
complainant's  packages  or  cartons  in  size  and  color  and 
general  appearance.  The  defendants  claim  that  they  have 
the  right  to  use  the  straight  lines  and  curves  in  a  trade- 
mark, that  they  have  the  right  to  use  the  word  **seal," 
that  they  have  the  right  to  use  white  lines  on  a  red  back- 
ground, and  that  they  have  the  right  to  use  cartons  of  a 
particular  size,  and  that  they  have  the  right  to  use  the 


Hi  Unfair  competition,   see  notes  to   Scheuer  v.   MuUer,  20  C.   C.  A. 
165 ;  Lare  v.  Harper  &  Bros.,  30  C.  C.  A.  376. 


32 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


different  colors  which  they  have  adopted  for  their  pack- 
ages, and  that  the  complainant  cannot  appropriate  any  of 
these  things  so  as  to  preclude  others  from  their  use.  All 
of  these  claims  of  the  defendants  are  true,  but  it  is  ap- 
parent, under  the  showing  here,  that  the  defcmdants  de- 
liberately sat  down  and  made  their  packages  as  like  in 
general  appearance  to  the  complainant's  packages  as 
would  be  necessary  to  catch  the  customer  and  escape  the 
courts.  They  had  the  right  to  use  the  background  used 
by  the  complainant,  they  had  the  right  to  use  clipped 
corners  and  the  word  ^*Seal,"  they  had  the  right  to  use 
any  color  that  the  complainant  used  for  cartons,  and  they 
had  the  right  to  use  packages  of  the  size  used  by  the  com- 
plainant. But  when  they  used  all  these  things  in  com- 
bination, the  object  is  too  apparent  to  admit  of  argument. 
The  defendants  put  up  a  package  which  they  say  is  exact- 
ly the  size  of  complainant's  package,  because  it  contains 
the  same  quantity  of  crackers,  which,  if  put  up  in  a  con- 
venient manner,  necessarily  compels  the  use  of  the  same- 
size  package.  But  this  does  not  explain  why  on  the 
largest-size  package  the  defendants  have  the  exact  shade 
of  red  used  by  complainant,  and  have  the  white  lettering 
of  substantially  the  same  type,  and  on  the  next-size  pack- 
age, they  have  blue,  like  complainant's.  Why  did  they 
not  use  blue  on  the  largest-size  package  and  red  on  the 
smaller?  No  one  can  read  the  pleadings  and  affidavits  in 
this  case  and  escape  the  conclusion  that  the  defendants 
are  endeavoring  to  appropriate  the  trade  of  the  com- 
plainant by  imitating,  in  its  general  effect,  its  seal  and 
packages,  and  to  escape  the  legal  effect  of  such  an  at- 
tempt by  making  dissimilar  minor  details.  The  fraud  is 
apparent,  and  the  motion  for  a  preliminary  injunction 
will  be  granted. 

127  Fed.  Eep.,  160. 


NATIONAL  BISCUIT  COMPANY   vs.  OHIO  BAKING  COMPANY  33 


FINAL  DECEEE. 


The  United  States  of  America, 

Northern  District  of  Ohio, 

Eastern  Division. 


^ss. 


At  a  stated  term  of  the  Circuit  Court  of  the  United 
States,  within  and  for  the  Eastern  Division  of  the  North- 
ern District  of  Ohio,  begun  and  held  at  the  City  of  Cleve- 
land, in  said  District,  on  the  first  Tuesday  in  April,  being 
the  7th  day  of  said  month,  in  the  year  of  our  Lord  one 
thousand  nine  hundred  and  three,  and  of  the  In- 
dependence of  the  United  States  of  America  the  one  hun- 
dred and  twenty-seventh,  to  wit :  On  Friday,  the  22"  day 
of  May,  A.  D.  1903. 

Present :  The  Honorable  Francis  J.  Wing,  U.  S.  Dis- 
trict Judge. 

Among  the  proceedings  then  and  there  had  were  the 
following,  to  wit: 

National  Biscuit  Company, 

vs. 
The     Ohio     Baking     Company, 
Stephen  C.  Morris,  and  George 
E.  Collings. 

This  cause  coming  on  to  be  heard  upon  pleadings 
and  proof,  and  having  been  fully  argued  by  counsel  re- 
spectively for  both  parties  litigant;  Mr.  Charles  K.  Of- 
field,  Mr.  Andrew  Squire,  and  Mr.  Earl  D.  Babst,  for 
Complainant;  Mr.  Thomas  A.  Banning,  and  Mr.  Ben- 
jamin C.  Starr,  for  Defendants:  And  the  court  being 
fully  advised,  and  having  fully  considered  the  same, 
orders,  adjudges,  and  decrees  as  follows : 

1.  That  the  said  Complainant,  the  National  Biscuit 
Company's  *  *  In-er-seal "  Trade  Mark  is  a  good  and  valid 


In  Equity. 
6131. 


I 


34 


NATIONAL  BISCUIT  COMPANY  V8.  OHIO  BAKING  COMPANY 


Trade  Mark,  and  the  complainant  has  full  right  and  titki 
thereto,  and  therein,  as  alleged  in  said  bill  of  complaint 
filed  herein. 

2.  That  the  said  defendants  have  infringed  upon  and 
violated  said  complainant's  '*In-er-sear'  Trade  Mark, 
as  alleged  in  said  bill  of  complaint,  by  putting  up  and 
selling  bakery  products  in  cartons  or  packages  like  those 
marked  ''Complainant's  Exhibits  Defendants'  Infring- 
ing Packages  Nos.  1,  2  and  3"  and  ''Defendants'  Ex- 
hibits Nos.  13,  14  and  15." 

3.  That  the  said  defendants  have  violated  com- 
plainant's equitable  rights;  in  putting  up,  selling  and  of- 
fering for  sale,  cartons  or  packages  of  bakery  products 
which  present  a  general  appearance  as  to  collocation  of 
size,  shape,  color,  lettering,  spacing  and  ornamentation, 
closely  resembling  complainant's  several  exhibits  re- 
spectively referred  to  in  the  bill  of  complaint,  and  marked 
as  "Complainant's  Exhibits." 

4.  That  the  said  defendants,  and  each  of  them,  their 
agents,  serv^ants,  and  employes,  be  and  hereby  are,  en- 
joined until  the  further  order  of  this  court  from 

a.  Imitating  or  simulating  complainant 's  ' '  In-er-seal ' ' 
Trade  Mark,  or  manufacturing,  handling,  or  selling  car- 
tons of  bakery  products  having  thereon  any  imitation  of 
complainant's  "In-er-seal"  Trade  Mark, ' calculated  to 
mislead  or  deceive;  like  those  marked  Complainant's 
Exhibits  Defendants'  Infringing  Packages  Nos.  1,  2  and 
3,  and  Defendants'  Exhibits  Nos.  13,  14  and  15,  but  this 
shall  not  be  construed  as  restraining  defendants  from 
selling  cartons  or  packages  of  bakery  products  with  their 
asserted  Trade  Mark  thereon,  provided  such  Trade  Mark 
is  so  differentiated  in  general  appearance  and  applica- 
tion from  said  complainant's  Trade  Mark  that  it  is  not 
calculated  to  deceive  the  ultimate  ordinar>^  purchaser. 

h.    From  putting  up  and  selling,  or  offering  for  sale,  the 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY  35 

particular  forms  of  cartons  or  packages  referred  to  in  the 
bill  of  complaint,  and  identified  therein  as  "Complain- 
ant's Exhibit  Defendants'  Infringing  Packages  Nos.  1, 
2  and  3,"  or  any  other  form  of  packages  or  cartons,  re- 
spectively, which  shall,  by  reason  of  the  collocation  of 
size,  shape,  colors,  lettering,  spacing  and  ornamentation, 
present  a  general  appearance  as  closely  resembling  com- 
plainant's several  exhibits  respectively  referred  to  in  the 
bill  of  complaint  and  marked  as  Complainant 's  Exhibits 
— as  do  the  said  defendants'  respectively  infringing  pack- 
ages Nos.  1,  2  and  3,  but  this  shall  not  be  construed  as  re- 
straining defendants  from  selling  packages  or  cartons  of 
the  size,  weight  and  shape  of  complainant's  packages,  nor 
from  using  the  respective  colors  as  wrappers  for  such 
packages,  provided  such  packages  are  so  differentiated 
in  general  appearance  from  said  complainant's  respec- 
tive packages  that  they  are  not  calculated  to  deceive  the 
ultimate  ordinary  purchaser. 

5.  That  the  said  complainant  has  a  right  to  recover  any 
and  all  profits  accruing  to  the  said  defendants  from  the 
unlawful  violation  and  infringement  of  said  complainant 's 
rights,  and  to  recover  all  damages  suffered  by  and  ac- 
cruing to  said  complainant  by  reason  of  the  commitment 
of  said  unlawful  and  infringing  acts,  together  with  the 
costs  herein  to  be  taxed,  and  that  the  same  may  be  refer- 
red to  Irvin  Belford,  he  being  a  suitable  person  as  Master 
of  this  Court,  and  approved  by  the  parties  to  take,  state 
and  report  an  account  of  such  damages  and  profits  under 
and  in  accordance  with  this  decree,  and  that  upon  such 
accounting  the  testimony  heretofore  taken  by  either  party 
in  this  case,  may  be  read  by  either  party,  and  referred  to 
and  considered  by  said  master. 

In  open  court  the  defendant  prayed  an  appeal,  which 
was  allowed  and  bond  fixed  at  $500.00. 


36 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKINCi  COMPANY 


The  United  States,^ 
OF  America.         j  ^^* 

I,  Irvin  Belford,  Clerk  of  the  Circuit  Court  of  the 
United  States,  within  and  for  the  Northern  District  of  the 
State  of  Ohio,  do  hereby  certify  that  I  have  compared 
the  witliin  and  foregoing  transcript  with  tlie  original  de- 
cree entered  upon  the  Journal  of  the  proceedings  of  said 
Court  in  the  therein  entitled  Cause,  at  the  term,  and  on 
the  day  therein  named;  and  do  further  certify  that  t\m 
same  is  a  true,  full  and  complete  transcript  and  copy 
thereof. 

Witness,  my  official  signature  and  the  seal  of  said 
Court,  at  Cleveland,  in  said  District,  this  1st  day  of  June, 
A.  D.  1903,  and  in  the  127"  year  of  the  Independence  of 
the  United  States  of  America. 

Irvin  Belford, 

Clerk. 
By  Thomas  M.  Sherlock, 

Deputy  Clerk. 


%nxUh  BUUb  (Hxrcmt  Court  at  Apppala 


Sixth  Circuit 


OHIO  BAKING  COMPANY,  STEPHEN  C. 
MORRIS  and  GEORGE  E.  COLLINGS, 

Appellants, 


vs. 


NATIONAL  BISCUIT  COMPANY 


Appellee. 


OPINION 


IN  EQUITY 

No.     1232 


THOMAS  A.  BANNING 
EPHRAIM  BANNING 
BENJAMIN  C.  STARR 

For  Appellants. 

SQUIRE,  SANDERS  &  DEMPSEY 
OFFIELD,  TOWLE  &  LIXTHICUM 
EARL  D.  BABST 

For  Appellee. 


< 

h 


i 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY  39 


OHIO  BAKING  CO.  et  AL   vs.   NATIONAL  BISCUIT   COMPANY 

(Circuit  Court  of  Appeals  of  the  United  States,  Sixth  Circuit. 

January  21,  1904.) 

No.   1233. 

1.  Trade  Mark — Protection — Infringement. 

The  right  of  the  owner  of  a  trade-mark  to  be  protected  in  the 
exclusive  use  thereof  is  not  dependent  on  the  federal  statute  au- 
thorizing registration. 

2.  Same— Nature  of  Relief— Unfair  Domestic  Competition. 

Where  the  ground  for  relief  in  a  suit  for  infringement  of  a  trade- 
mark was  unfair  competition  in  domestic  commerce,  and  the  cause 
of  action  alleged  was  an  imitation  of  plaintiff's  trade-mark  on  cartons 
used  in  local  trade,  and  there  was  no  allegation  that  complainant's 
foreign  trade  was  injured  by  the  acts  complained  of,  the  fact  that 
the  trade-mark  was  registered,  and  that  complainant  was  entitled 
to  protection  under  the  federal  statute  with  regard  to  foreign  com- 
merce, was  immaterial. 

3.  Same — Evidence. 

Complainant's  "In-er-seal"  trade-mark,  as  known  to  the  public, 
was  printed  in  white  letters  on  a  vivid  red  back-ground  of  a  peculiar 
shade,  and  applied  to  the  ends  of  cracker  and  biscuit  cartons,  in 
which  complainant's  goods  were  packed  for  sale.  Shortly,  there- 
after defendant  conceived  a  trade-mark  with  the  words  "Factory 
Seal"  printed  on  the  same  colored  labels,  which  it  applied  to  the 
ends  of  similar  packages  of  its  biscuits.  At  the  time  defendant 
adopted  this  trade-mark  it  knew  complainant's  crackers  were  the 
only  ones  sold  with  the  red  seal  on  the  end  of  the  cartons,  and  that 
its  trade-marks  were  liable  to  deceive  careless  purchasers.  Held, 
that  defendants'  trade-mark,  w^hen  so  printed  and  used,  was  an 
infringement  on   complainant's  trade-mark,   and   should   be   enjoined. 

Appeal  from  the  Circuit  Court  of  the  United  States  for 
the  Northern  District  of  Ohio.  For  opinion  below,  see  127 
Fed.,  160. 

Thomas  A.  Banning,  Ephraim  Banning,  and  Benjamin 
C.  Starr,  for  appellants. 

Squire,  Sanders  &  Dempsey,  Earl  D.  Babst,  and  Offield, 
Towle  &  Linthicum,  for  appellee. 

Before  Luetoi^  and  Richards,  Circuit  Judges,  and 
Thompson,  District  Judge. 


40 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


' 


EICHARDS,  Circuit  Judge.  In  March,  1900,  the  com- 
plainant below,  the  National  Biscuit  Company,  was  en- 
gaged in  the  manufacture  and  sale  of  bakery  products, 
consisting  of  biscuits,  crackers,  etc.  It  owned  and  operated 
some  75  plants,  located  in  the  leading  cities  of  the  United 
States,  the  products  of  which  were  put  out  in  packages 
or  cartons  under  different  factory  names,  indicating  their 
character  and  origin.  For  the  purpose  of  identifying  all 
these  products,  making  them  known  to  the  public,  and 
guarantying  their  authenticity,  it  adopted  an  arbitrary 
design  or  symbol  known  as  the  *  *  In-er-seaP '  trade-mark 
for  use  on  its  cartons,  and  at  a  cost  of  hundrt^ds  of  thou- 
sands of  dollars  advertised  it  throughout  this  country  and 
the  world  as  the  mark  by  which  its  goods  might  be  recog- 
nized. Except  for  the  use  of  some  green  and  orange  labels, 
which  were  soon  abandoned,  the  ''In-er  Seal"  trade-mark 
was  printed  in  white  letters  upon  a  vivid  red  label  with 
clipped  corners,  and  applied  to  the  ends  of  tlie  cartons. 
The  trade-mark  was  registered,  the  application  being  filed 
May  12,  1900.  In  the  latter  part  of  August,  1900,  the  de- 
fendant below,  the  Ohio  Baking  Company,  was  engaged 
at  Cleveland,  Ohio,  in  making  and  selling  bread  and  cakes. 
It  had  been  so  engaged  for  17  years.  At  this  time,  having 
decided  to  enter  upon  the  biscuit  and  cracker  business,  it 
employed  one  Miles,  a  former  employe  of  tlie  National 
Biscuit  Company,  and  gave  him  charge  as  manager  of  the 
cracker  department  about  to  be  established.  Within  three 
or  four  weeks  afterwards  it  began  to  place  its  biscuits  and 
crackers  upon  the  market,  packed  in  cartons  of  substan- 
tially the  same  size  as  those  used  by  the  National  Biscuit 
Company,  and  in  some  cases  of  the  same  color,  style  of 
ornamentation,  and  general  appearance,  all  having  on  the 
ends,  printed  in  white  letters  upon  red  labels  with  clipped 
corners,  a  fanciful  figure,  known  as  the  '* Factory  Seal" 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY  41 

trade-mark,  which  the  Ohio  Baking  Company,  upon  enter- 
ing the  cracker  business,  for  the  first  time  adopted  and 
began  to  use.  This  trade-mark  was  registered,  the  appli- 
cation being  filed  October  9,  1900.  For  the  purpose  of 
comparison,  the  two  trade-marks  are  shown  in  the  follow- 
ing illustrations,  the  vivid  red  background  being  desig- 
nated by  the  black  background : 


I  MH  T         •l-iiv     ir' "•>■  «»^ 


42  NATIONAL  BISCUIT  COMPANY   vs.  OHIO  BAKING  COMPANY 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


43 


■ 


The  original  suit  was  brought  by  the  National  Biscuit 
Company,  to  restrain  the  Ohio  Baking  Company  and  its 
officers  from  advertising  or  selling  its  goods  in  any  pack- 
age having  on  it  the  * '  In-er-seaP '  trade-mark  or  any  imi- 
tation thereof,  or  in  any  package  dressed  in  imitation  of 
one  used  by  the  National  Biscuit  Company,  and  for  an  ac- 
counting of  the  profits  made  by  such  unfair  competition. 

On  an  application  for  a  preliminary  injunction.  Judge 
Wanty  restrained  the  defendant  below,  first,  from  using 
the  **In-er-seaP'  trade-mark  upon  cartons  containing  its 
bakery  products,  as  shown  in  certain  exhibits,  or  adver- 
tising or  selling  its  bakery  products  in  cartons  containing 
thereon  the  *  *  In-er-seaP '  trade-mark  or  any  imitation 
thereof ;  and,  second,  from  putting  up  and  selling  or  offer- 
ing for  sale  the  particular  cartons  shown  in  certain  ex- 
hibits, or  any  other  cartons  resembling  the  complainant 's 
cartons  as  closely  as  they  do.  But  this  was  not  to  be  con- 
strued as  restraining  the  defendant  from  selling  cartons 
of  the  size,  weight,  and  shape  of  the  complainant's,  nor 
from  using  the  respective  colors  as  wrappers,  provided 
they  were  so  differentiated  in  general  appearance  as  not 
to  be  calculated  to  deceive  the  ultimate  ordinary  pur- 
chaser. There  was  an  appeal  from  Judge  Wanty 's  order, 
and  this  court  reversed  the  portion  respecting  the  use  of 
the  ^^Tn-er-seaP'  trade-mark  or  any  imitation  thereof,  but 
affirmed  the  rest.  Upon  the  return  of  the  case  to  the  Circuit 
Court,  an  application  was  made  to  Judge  Severens  for 
an  attachment  for  contempt  against  the  defendant  below 
for  putting  out  certain  cartons  in  violation  of  the  second 
part  of  Judge  Wanty 's  order,  but  Judge  Severens  dis- 
charged the  rule,  holding  that  the  cartons  did  not  present 
a  general  appearance   so   closely  resembling  the  com- 
plainant's exhibit  mentioned  in  the  restraining  order  as 
to  come  within  its  terms.  Afterwards  the  case  came  on  for 


42 


NATIONAL  BISCl  IT  COMl'ANY    vs.  OHIO   BAKING  COMPANY 


NATIONAL  BISCUIT  COMPANY  r.s.  OHIO  BAKING  COMPANY 


43 


The  original  suit  was  brought  by  the  Xational  Biscuit 
Company,  to  restrain  the  Ohio  Baking  Conii)any  and  its 
officers  from  advertising  or  selling  its  goods  in  any  i)ack- 
age  having  on  it  the  ^'In-er-seal"  trade-mark  or  any  imi- 
tation thereof,  or  in  any  package  dressed  in  imitation  of 
one  used  by  the  Xational  Biscuit  Comi)any,  and  for  an  ac- 
counting of  the  profits  made  by  such  unfair  competition. 

On  an  application  for  a  preliminary  injunction,  Judge 
Wanty  restrained  the  defendant  below,  first,  from  using 
the  ^*In-er-seaP'  trade-mark  upon  cartons  containing  its 
bakery  products,  as  shown  in  certain  exhibits,  or  adver- 
tising or  selling  its  bakery  products  in  cartons  containing 
thereon  the  ^^In-er-seaT^  trade-mark  or  anv  imitation 
tliereof ;  and,  second,  from  putting  up  and  selling  or  offer- 
ing for  sale  the  particular  cartons  shown  in  certain  ex- 
hibits, or  any  other  cartons  resembling  the  complainant's 
cartons  as  closelv  as  tliev  do.   But  this  was  not  to  b(^  con- 
strued  as  restraining  tlie  defendant  from  selling  cartons 
of  the  size,  weight,  and  shape  of  the  complainant's,  nor 
from  using  the  respective  colors  as  wrappers,  provided 
they  were  so  differentiated  in  general  appearance  as  not 
to  l)e  calculated  to  deceive  the  ultimate  or<linary  pur- 
chaser.  There  was  an  appeal  from  Judge  AVanty's  order, 
and  this  court  reversed  the  portion  respecting  the  use  of 
the  "Tn-er-seal"  trade-mark  or  any  imitation  thereof,  but 
affirmed  the  rest.  X^pon  the  return  of  thecnse  to  the  Circuit 
Court,  an  application  was  made  to  Judge  Severens  for 
an  attachment  for  contempt  against  th"  defendant  below 
for  putting  out  certain  cartons  in  violation  of  the  settond 
part  of  Judge  Wanty's  order,  but  Judge  Severens  dis- 
charged the  rule,  holding  that  the  cartons  did  not  present 
a   general  appearance   so   closely  resembling  the   com- 
plainant's exhibit  mentioned  in  the  restraining  order  as 
to  come  within  its  terms.  Afterwards  the  case  came  on  for 


'  *-'u»m^m^* 


44 


NATIONAL  BISCUIT  COMPANY  V8.  OHIO  BAKING  COMPANY 


hearing  before  the  Circuit  Court,  Judge  Wing  sitting, 
upon  the  pleadings  and  proof,  and  a  decree  was  rendered 
in  favor  of  the  complainant,  holding:  (1)  That  the  ^'In- 
er-seaP'  trade-mark  is  a  good  and  valid  trade-mark.  (2) 
That  the  defendants  have  infringed  this  trade-mark  by 
putting  up  and  selling  bakery  products  in  cartons  like 
those  shown  in  certain  exhibits  mentioned.  (3)  That  the 
defendants  have  violated  the  complainant's  equitable 
rights  in  putting  up  and  selling  its  bakery  products  in 
cartons  which  present  a  general  appearance  closely  re- 
sembling those  of  the  complainant  as  shown  in  certain  ex- 
hibits. (4)  That  the  defendants  be  enjoined:  (a)  From 
imitating  the '^n-er-sear'  trade-mark,  or  making,  han- 
dling, or  selling  cartons  of  bakery  products  having  there- 
on any  imitation  of  the  ^an-er-seaP'  trade-mark,  calcu- 
lated to  mislead  or  deceive,  like  those  shown  in  certain 
exhibits;  '*but  this  shall  not  be  construed  as  restraining 
defendants  from  selling  cartons  or  packages  of  bakery 
products  with  their  asserted  trade-mark  thereon,  pro- 
vided such  trade-mark  is  so  differentiated  in  general  ap- 
pearance and  application  from  said  complainant's  trade- 
mark that  it  is  not  calculated  to  deceive  the  ultimate 
ordinary  purchaser.''  (b)  From  putting  up  and  selling 
or  offering  for  sale  the  particular  forms  of  cartons  shown 
in  certain  exhibits,  or  cartons  resembling  them  so  closely 
as  to  mislead  or  deceive ;  but  this  shall  not  be  construed 
as  restraining  the  defendants  from  selling  cartons  of  the 
size,  weight,  and  shape  of  the  complainant's,  but  so  dif- 
ferentiated in  general  appearance  as  not  to  be  calculated 
to  deceive  the  ordinary  purchaser.  (5)  That  the  com- 
plainant has  the  right  to  recover  all  profits  accruing  from 
the  violation  and  infringement  of  its  rights,  and  that  the 
ease  be  referred  to  a  master  to  take  and  report  an  ac- 
count  of  the  damages  and  profits.  From  this  decree  an 
appeal  has  been  taken  to  this  court. 


NATIONAL  BISCUIT  COMPANY   us.  OHIO  BAKING  COMPANY  45 

The  right  to  be  protected  in  the  exclusive  use  of  a  trade- 
mark is  not  dependent  on  the  federal  statute  authorizing 
the  registration  of  certain  trade-marks.  It  has  been  long 
recognized  by  the  common  law  and  enforced  by  the  chan- 
cery courts  of  England  and  this  country.  The  use  of  a 
trade-mark  is  to  distinguish  one's  goods.  No  man  has  a 
right  to  use  or  imitate  the  trade-mark  of  another,  and 
thus  represent  his  goods  as  the  goods  of  another.  How- 
ever broad  the  field  of  competition,  it  does  not  include  the 
use  of  a  rival's  trade-mark,  either  directly  or  covertly,  for 
the  purpose  of  deceiving  the  public,  and  marketing  his 
own  goods  as  those  of  his  rival.  The  one  question  of  fact 
in  this  case  is  whether  the  '^Factory  Seal"  trade  mark, 
when  printed  in  white  letters  upon  a  red  label  with  clip- 
ped corners,  and  applied  to  the  ends  of  cartons  containing 
bakery  products,  bears  such  a  resemblance  to  the  ^^In-er- 
seal"  trade-mark,  when  similarly  applied,  as  to  deceive 
the  ordinary  purchaser,  and  lead  him  to  believe  he  is  pur- 
chasing the  goods  of  the  National  Biscuit  Company,  when 
in  fact  he  is  getting  the  goods  of  the  Ohio  Baking  Com- 
pany. McLean  v.  Fleming,  96  U.  S.,  255,  24  L.  Ed.  828; 
Manufacturing  Co.  v.  Trainer,  101  U.  S.  65,  25  L.  Ed.,  993  \ 
Coats  V.  Merrick  Thread  Co.,  149  U.  S.  562,  13  Sup.  Ct! 
966,  37  L.  Ed.,  847.  We  have  made  a  careful  inspection  of 
the  cartons  and  trade-marks  of  the  respective  companies, 
and  are  satisfied  not  only  that  the  ** Factory  Seal"  trade- 
mark as  applied  is  calculated  to  mislead  and  deceive  the 
ordinary  purchaser,but  that  it  was  designed,  adopted,  and 
used  for  that  purpose.  Its  use  was  a  part  of  the  **  cracker 
campaign"  planned  in  advance.  The  National  Biscuit 
Company's  crackers  were  the  only  ones  with  a  red  seal  on 
the  end  of  the  cartons.  The  defendants  below  knew  this. 
And  they  knew  also  that  crackers  are  sold  for  the  most 
part  over  the  counter  to  careless  buyers,  who  are  not  apt 
to  examine  the  carton  carefully,  but  likely  to  carry  in 


46 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


mind  some  one  distinguisliing  feature,  such  as  a  red  seal 
on  the  ends.  The  crackers  of  the  National  Biscuit  Com- 
pany are  put  out  under  many  names.  Thus  the  plant  at 
Toledo  was  called  the  Worts-Kirk-Bigelow  plant,  one  at 
Chicago  the  Kennedy,  anotlier  the  Bremner,  and  so  on. 
The  name  of  the  factory  would  mean  nothing,  the  pres- 
ence of  the  red  seal  everything  to  the  servant  girl  or  child 
sent  to  the  grocery  for  a  box  of  **In-er-seaP*  crackers. 
The  careless  purchaser  asking  for  a  box  *'of  those  red 
seal  crackers'*  would  take  the  *' Factory  SeaP'  goods, 
thinking  he  was  getting  the  *  *  In-er-seaP '  goods. 

But  it  is  insisted  that  this  is  a  suit  on  a  registered 
trade-mark,  and  that  a  trade-mark  cannot  be  extended  be- 
yond the  limits  fixed  in  the  registration.  This  is  not,  how- 
ever, a  suit  on  a  registered  trade-mark.  Neither  the  alle- 
gations nor  the  proof  would  entitle  the  complainant  to  re- 
lief under  the  federal  act.  Warner  v.  The  Sea  tie  S  Hereth 
Co.,  191  U.  S.,  195,  24  Sup.  Ct.,  79,  48  L.  Ed.—.  There  is 
no  evidence  showing  that  the  trade  of  the  National  Biscuit 
Company  with  foreign  countries  was  injured  by  the  acts 
complained  of.  The  ground  of  the  relief  sought  is  unfair 
competition  in  domestic  commerce — the  frau<lulent  imita- 
tion of  the  complainant's  trade-mark  and  cartons  for  use 
in  local  trade.   Conceding,  as  Mr.  Justice  Fuller  says,  in 
Watch  Co.  V.  Watch  Case  Co.,  179  U.  S.,  6m,  674,  21  Sup. 
Ct.,  270,  45  L.  Ed.,  365,  that  in  this  class  of  cases  **such 
circumstances  must  be  made  out  as  will  show  wrongful  in- 
tent in  fact,  or  justify  that  inference  from  the  inevitable 
consequences  of  the  act  complained  of,''  they  are  present 
in  ample  measure  in  the  record.    The  trade-mark  which 
the  court  is  asked  to  protect  is  therefore,  so  far  as  this 
suit  is  concerned,   a  common-law  trade-mark,   and   its 
limits  are  to  be  determined  by  its  application  and  use.  As 
Mr.  Justice  Shiras  said  in  Kohler  Mfg.  Co.  v.  Beeshore, 
59  Fed.,  572,  575,  8  C.  C.  A.,  215,  218:  ^^We  are  not  will- 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


47 


ing  to  affirm  the  proposition  that  the  registration  in  the 
Patent  Office  of  a  certain  name  or  phrase  as  a  trade-mark 
*     *     *     ^in  in  all  cases  prevent  or  estop  the  owner  from 
adopting  and  using  another  name  or  phrase  as  a  trade- 
mark."  The  legal  effect  of  the  registry  of  a  trade-mark 
being  restricted  to  foreign  commerce  and  that  with  the 
Indian  tribes,  it  would  seem  that  as  to  domestic  com- 
merce a  person  might  adopt  and  use  a  different  trade- 
mark than  that  registered.  Now,  the  trade-mark  actually 
used — the  '*In-er-seal"  trade-mark,  as  known  to  the  pub- 
lic— was  printed  in  white  letters  upon  a  vivid  red  back- 
ground of  a  peculiar  shade.  Before  the  defendants  began 
to  place  their  goods  upon  the  market,  this  vivid  red  color 
had  become  associated  with  the  *^In-er-seal"  trade-mark. 
The  defendants  below  knew  this  when  they  put  their 
** Factory  Seal"  trade-mark  upon  the  vivid  red  back- 
ground of  precisely  the  same  shade.   Wliile  it  is  true  no 
one  has  the  right  to  monopolize  a  particular  color,  yet  the 
courts  have  repeatedly  held  that  a  person  may  be  re- 
strained from  using  a  particular  color,  in  combination 
with  other  things,  to  mislead  the  public,  and  market  his 
goods  as  those  of  another.  Garrett  v.  T.  H.  Garrett  &  Co., 
78  Fed.,  472,  24  C.  C.  A.,  173 ;  FairbanJc  Co.  v.  Bell  Mfg, 
Co.,  77  Fed.,  869,  23  C.  C.  A.,  554;  Hires  Co.  v.  Consumers' 
Co.,  100  Fed.,  800,  41  C.  C.  A.,  71 ;  Morgan  Co.  v.  Whittier 
Co.  (C.  C),  118  Fed.,  657;  Cohen  v.  Delavina  (C.  C),  104 
Fed.  946.  We  are  satisfied  that  the  ^* Factory  Seal"  trade- 
mark, when  printed  on  the  vivid  red  background  and  ap- 
plied to  the  ends  of  a  cracker  or  biscuit  carton,  is  an  in- 
fringement of  the  *'In-er-seal"  trade-mark,  and  should 
be  enjoined. 

.  It  is  submitted  that  the  decree  of  the  Circuit  Court  en- 
joining the  use  of  any  imitation  of  the  *'In-er-seal"  trade- 
mark is  inconsistent  with  the  order  of  this  court  revers- 
ing the  first  part  of  Judge  Wanty's  restraining  order  re- 


48 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMrANY 


specting  the  trade-mark.  But  Judge  Wanty's  order  re- 
strained the  use  of  the  **  Factory  SeaP'  trade-mark  in  any 
manner  whatsoever  in  connection  with  biscuit  or  cracker 
cartons,  while  the  decree  of  the  Circuit  Court  provides 
that  it  may  be  used  when  so  differentiated  in  general  ap- 
pearance and  application  from  the  **In-er-seaP'  trade- 
mark as  not  to  be  calculated  to  deceive  the  ultimate  ordi- 
nary purchaser.  So  that  in  affirming  this  decree,  it  is  not 
necessary  to  prohibit  the  use  in  any  manner  whatsoever 
of  the  ''Factory  SeaP'  trade-mark,  but  only  its  use  in  a 
way  calculated  to  mislead  and  deceive. 

But,  however  this  may  be,  the  case  is  now  before  us 
upon  the  merits,  which  we  have  carefully  examined,  and 
we  are  satisfied  that  the  manner  in  which  the  ''Factory 
SeaP'  trade-mark  has  been  used  is  calculated  to  mislead 
and  deceive,  and  constitutes  an  infringement  of  the  "In- 
er-seaP'  trade-mark. 

The  judgment  of  the  Circuit  Court  is  affirmed. 
127  Fed.  Eep.,  116. 


^uprpm?  (Hanrt  nf  t\\t  l^mtth  ^tatpa 


October  Term,  1904 


OHIO  BAKING  COMPANY,  STEPHEN  C.^ 
MORRIS  and  GEORGE  E.  COLLINGS, 

Petitioners, 

NATIONAL  BISCUIT  COMPANY 

Respondent. 


> 


No.  38:1 


PETITION  FOR  WRIT  OF  CERTIORARI 
AND  ORDER  DENYING  PETITION 


THOMAS  A.  BANNINcf 
EPHRAIM  BANNING 

For  Petitioners. 

CHARLES  K.  OFFIELD 

EARL  D.  BABST 

For  Respondent. 


I 


y""^ 


Ma 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY         51 


Supreme  Court  of  the  United  States. 
October  Term,  A.  D.  1904. 


The  Ohio  Baking  Company, 
Stephen  C.  Morris  and  George 
E.  Collings, 

Petitioners, 

vs. 

National  Biscuit  Company, 

Respondent, 


On  Petition  for  Writ  of 
Certiorari  directed  to 
the  United  States  Cir- 
cuit Court  of  Appeals 
for  the  Sixth  Circuit. 


PETITION  FOB  WEIT  OF  CEETIORAEI. 


To  the  Honorable  the  Chief  Justice  and  Associate  Jus- 
tices of  the  Supreme  Court  of  the  United  States: 

The  petition  of  the  Ohio  Baking  Company,  a  corpora- 
tion organized  and  existing  under  and  by  virtue  of  the 
laws  of  the  State  of  Ohio,  and  Stephen  C.  Morris,  treas- 
urer and  general  manager  of  said  company,  and  George 
E.  Collings,  president  of  said  company,  respectfully 
represents  and  shows  unto  your  Honors  as  follows : 

1.  That  about  the  1st  day  of  March,  1900,  the  Na- 
tional Biscuit  Company  adopted  what  is  generally  known 
as  its  ''Iner  SeaP'  trade-mark — being  the  misspelled 
words  *4nner  seal,"  indicating  that  the  package  was 
sealed  on  the  inside,  and  a  purely  arbitrary  figure  or  de- 
sign—for use  on  various  kinds  of  bakery  products  in- 
cluding biscuits,  crackers,  wafers,  cakes,  bread,  snaps, 
jumbles,  etc.  The  trade-mark  has  usually  been  printed 
on  seals  or  labels  which  have  been  applied  to  the  boxes, 
packages  or  cartons  in  which  the  goods  were  put  up  for 
the  market.  This  seal  or  label  has  usually  been  applied 
to  the  end  of  the  carton  or  package.  The  trade-mark  has 
been  printed  on  orange,  green  or  red  colored  seals  or 


C^T" 


52  NATIONAL  BISCUIT  COMPANY  v«.  OHIO  BAKING  COMPANY 

labels.    The  trade-mark  printed  on  one  of  the  red  end 
labels  or  seals  appears  as  follows: 


2.  That  in  the  bill  of  complaint  charging  infringe- 
ment of  the  complainant's  '^Iner  Seal"  trade-mark,  in 
the  fourth  paragraph  of  the  bill,  the  characteristics, 
peculiarities,  and  distinguishing  things  and  features  of 
such  *'Iner  SeaP'  trade-mark  are  stated  and  alleged  to 
be  the  following: 

*'An  oval-shaped  figure  separated  centrally  and  hor- 
izontally in  the  direction  of  its  greatest  length  by  a  bar, 
from  which  there  rises  centrally  and  at  right  angles 
thereto  a  perpendicular  bar,  which  near  its  upper  end  is 
intersected  by  double  horizontal  cross-bars,  thus  forming 
what  might  be  designated  as  a  **double-T-sliaped''  figure 
or  cross  tree,  while  within  said  oval-shaped  section  and 
above  the  horizontal  dividing-bar  and  to  the  left  of  the 
perpendicular  intersecting  bar  appear  the  letters  **I  W 
and  on  the  opposite  side  of  said  perpendicular  intersect- 
ing bar  and  above  said  horizontal  division-bar  appear  the 
letters  **E  E"  the  lower  section  of  said  oval-shaped 
figure  having  therein  the  word  **Seal." 

3.  That  the  National  Biscuit  Company,  registered  its 


NATIONAL  BISCUIT  COMPANY  va.  OHIO  BAKING  COMPANY 


53 


**Iner  Seal'*  trade-mark  in  the  Patent  Office,  the  certifi- 
cate of  registry  being  dated  September  18, 1900,  and  num- 
bered 35,108,  on  an  application  filed  May  12,  1900.  The 
certificate  of  registry  of  such  trade-mark  will  be  found  in 
the  Record,  following  page  160.  In  the  specification  of 
such  registration,  which  was  sworn  to,  the  National  Bis- 
cuit Company  stated  the  things  in  which  the  trade-mark 
consisted  as  follows: 

*'Said  trade-mark  consists  of  an  arbitrarily  selected 
design  or  symbol  representing  an  oval-shaped  figure  sep- 
arated centrally  and  horizontally  in  the  direction  of  its 
greatest  length  by  a  bar,  from  which  there  rises  centrally 
and  at  right  angles  thereto  a  perpendicular  bar,  which 
near  its  upper  end  is  intersected  by  double  horizontal 
cross-bars,  thus  forming  what  might  be  designated  as  a 
''double-T-shaped"  figure  or  cross-tree,  while  within  said 
oval-shaped  section  and  above  the  horizontal  dividing-bar 
and  to  the  left  of  the  perpendicular  intersection  bar  ap- 
pear the  letters  ''IN"  and  on  the  opposite  side  of  said 
perpendicular  intersecting  bar  and  above  said  horizontal 
division-bar  appear  the  letters  "E  R"  the  lower  section 
of  said  oval-shaped  figure  having  therein  the  word ' '  Seal. ' ' 

And  afterwards  in  said  specification,  after  stating  that 
the  trade  mark  was  not  confined  to  the  size  of  the  end 
labels,  nor  to  their  application  to  the  end  of  the  package, 
nor  to  the  shape  of  the  label,  nor  to  the  size  of  the  letters 
and  figures,  nor  to  the  color  of  the  letters  and  figures,  nor 
to  the  color  of  the  label  or  background,  nor  to  the  style 
of  the  letters,  nor  to  the  color  of  the  border  of  the  figure 
or  the  bars,  nor  to  a  white  color  for  the  letters  or  bars,  the 
National  Biscuit  Company  declared  the  real  and  essential 
features  of  the  trade-mark  in  the  following  words : 

"The  essential  and  paramount  feature  of  said  trade- 
mark consisting  of  an  oval-shaped  figure  divided  centrally 
and  horizontally  in  the  direction  of  its  greatest  length 
by  a  bar  from  which  extends  a  perpendicular  bar  which 
is  intersected  near  its  upper  end  by  two  horizontal  cross- 


52 


XATIONAT.   RISrriT  COMPANY   vs.   OHIO  BAKING   f'OMPANY 


lalx'ls.    The  trade-mark  printed  on  one  of  the  red  end 
labels  or  seals  appears  as  follows: 


2.  That  in  the  bill  of  complaint  charging  infringe- 
ment of  the  complainant's  ''Iner  Seal''  trade-mark,  in 
the  fourth  paragraph  of  the  bill,  the  characteristics, 
peculiarities,  and  distinguishing  things  an«l  features  of 
such  ''Iner  Seal"  trade-mark  are  stated  and  alleged  to 
be  the  following: 

**An  oval-shai)ed  figure  separated  centrally  and  hor- 
izontally in  the  direction  of  its  greatest  length  by  a  bar, 
from  which  there  rises  centrally  and  at  right  angles 
thereto  a  perpendicular  bar,  which  near  its  upper  end  is 
intersected  by  double  horizontal  cross-bars,  thus  forming 
what  might  be  designated  as  a  ** double-T-shaped"  figure 
or  cross  tree,  while  within  said  oval-shaped  section  and 
above  the  horizontal  dividing-bar  and  to  the  left  of  the 
perpendicular  intersecting  bar  appear  the  letters  *^I  N" 
and  on  the  opposite  side  of  said  perpendicular  intersect- 
ing bar  and  above  said  horizontal  division-bar  appear  the 
letters  *'E  E"  the  lower  section  of  said  oval-shaped 
figure  having  therein  the  word  *^Seal." 

3.  That  the  National  Biscuit  Company,  registered  its 


NATIONAL  BISCL  IT  COMPANY   is.  OHIO  BAKING   COMPANY 


53 


**lner  Seal"  trade-mark  in  the  Patent  Office,  the  certifi- 
cate of  registry  being  dated  September  18, 1900,  and  num- 
bered 35,108,  on  an  application  filed  May  lli,  1900.  The 
certificate  of  registry  of  such  trade-mark  will  be  found  in 
the  Record,  following  page  160.  In  the  specification  of 
such  registration,  which  was  sworn  to,  the  National  Bis- 
cuit Company  stated  the  things  in  which  the  trade-mark 
consisted  as  follows: 

'VSaid  trade-mark  consists  of  an  arbitrarily  selected 
design  or  symbol  representing  an  oval-shaped  figure  sep- 
arated centrally  and  horizontally  in  the  direction  of  its 
greatest  length  by  a  bar,  from  which  there  rises  centrally 
and  at  right  angles  thereto  a  perpendicular  bar,  whicli 
near  its  upper  end  is  intersected  by  double  horizontal 
cross-bars,  thus  forming  what  might  be  designated  as  a 
*' double-T-shaped"  figure  or  cross-tree,  while  within  said 
oval-shaped  section  and  above  the  horizontal  dividing-bar 
and  to  the  left  of  the  perpendicular  intersection  bar  ap- 
pear the  letters  '*!  N"  and  on  the  opposite  side  of  said 
perp(^ndicular  intersecting  bar  and  above  said  horizontal 
division-bar  appear  the  letters  '*E  R"  the  lower  section 
of  said  oval-shaped  figure  having  therein  the  word  * '  Seal. ' ' 

And  afterwards  in  said  specification,  after  stating  that 
the  trade  mark  was  not  confined  to  the  size  of  the  end 
labels,  nor  to  their  application  to  the  end  of  the  package, 
nor  to  the  shape  of  the  label,  nor  to  the  size  of  the  letters 
and  figures,  nor  to  the  color  of  the  letters  and  figures,  nor 
to  the  color  of  the  label  or  background,  nor  to  the  style 
of  the  letters,  nor  to  the  color  of  the  border  of  the  figure 
or  the  bars,  nor  to  a  white  color  for  the  letters  or  bars,  the 
National  Biscuit  Company  declared  the  real  and  essential 
features  of  the  trade-mark  in  the  following  words : 

'*The  essential  and  paramount  feature  of  said  trade- 
mark consisting  of  an  oval-shaped  figure  divided  centrallv 
and  horizontally  in  the  direction  of  its  greatest  length 
by  a  bar  from  which  extends  a  perpendicular  bar  which 
is  intersected  near  its  upper  end  by  two  horizontal  cross- 


54 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


bars,  while  within  said  oval-shaped  figure  and  above  said 
central  horizontal  bar  appear  the  letters  "I  N^'  and 
''E  K/'  while  below  said  horizontal  dividing-bar  appears 
the  word  *  *  ISeal. ' ' 

4.  That  about  the  1st  day  of  August,  1900,  your  peti- 
tioner, the  Ohio  Baking  Company,  adopted  what  is  gen- 
erally known  as  its  *^ Factory  Seal''  trade-mark,  consist- 
ing of  the  monogram  word  **Ohio,''  being  the  designating 
or  localizing  w^ord  of  its  corporate  name.  The  words 
'^factory  seal''  indicate  that  the  package  was  filled  and 
sealed  at  the  factory  so  as  to  place  responsibility  in  case 
the  goods  are  found  defective.  The  trade-mark  has  usu- 
ally been  applied  to  cartons  or  packages  containing  bakery 
products  by  printing  it  upon  the  end  seals.  The  founda- 
tion color  of  these  end  seals  or  labels  from  the  commence- 
ment has  been  red.  A  sample  of  such  end  seals  is  sub- 
mitted as  follows : 


NATIONAL  BISCLIT  COMl'ANY    is.  OHIO  BAKING  COMI'ANY 


00 


5.  That  your  petitioner,  the  Ohio  Baking  Company, 
also  registered  its  '* Factory  Seal"  trade-mark  in  the  Pat- 
ent Office,  the  certificate  of  registry  being  dated  Decem- 
ber 18,  1900,  and  numbered  35,597,  on  an  application  filed 
October  9, 1900.  The  certificate  of  registry  of  such  trade- 
mark will  be  found  in  the  back  of  the  record. 

6.  That  in  December,  1900,  the  National  Biscuit  Com- 
pany filed  its  bill  of  complaint  in  the  United  States  Cir- 
cuit Court  for  the  Northern  District  of  Ohio,  Eastern 
Division,  charging  your  petitioners  wdth  infringement  of 
its  **Iner  Seal"  trade-mark,  applied  to  packages  and  car- 
tons of  crackers  and  bakery  products,  by  the  use,  by 
the  Ohio  Baking  Company,  of  its  *' Factory  Seal"  trade- 
mark, the  monogram  word  ''Ohio,"  as  shown  in  the  sam- 
ple above. 

7.  That  in  January,  1901,  a  preliminary  injunction 
order  was  entered  by  his  Honor,  Judge  George  P.  Wanty, 
restraining  your  petitioners,  first,  ''from  applying  or 
using  complainant's  'Iner  Seal'  trade-mark,  in  any  man- 
ner whatsoever,  upon  or  in  connection  with  bakery  prod- 
ucts," as  shown  in  certain  infringing  packages  1,  2  and 
3;  and,  secondly,  from  putting  up  or  selling  cartons  or 
packages  like  the  packages  1,  2  and  3  or  others  "w^hich 
shall,  by  reason  of  the  collocation  of  size,  shape,  colors, 
lettering,  spacing  and  ornamentation,  present  a  general 
appearance  closely  resembling  complainant's  several  ex- 
hibits respectively"  as  did  the  packages  1,  2  and  3,  but 
at  the  same  time  the  order  provided  that  "this  shall  not 
be  construed  as  restraining  defendants  from  selling  pack- 
ages or  cartons  of  the  size,  weight  and  shape  of  complain- 
ant's packages,  nor  from  using  the  respective  colors  as 
wrappers  for  such  packages,  provided  such  packages  are 
so  differentiated  in  general  appearance  from  said  com- 
pJainant's  respective  packages  that  they  are  not  calcu- 
lated to  deceive  the  ultimate  ordinarv  purchaser."  (Rec- 
ord, 141-2.) 


54 


NATIONAL  BISIM  IT  COMrANY    rs.  OHIO  BAKING   (  OMTANY 


l)ar8,  wiiilc  within  said  oval-shaped  tigure  and  above  said 
central  horizontal  bar  appear  the  letters  "1  N"  and 
"E  I\/'  while  below  said  horizontal  dividing-bar  appears 
the  word  "Seal." 

4.  That  about  tho  1st  day  of  August,  19()i),  your  peti- 
tioner, the  Ohio  leaking  Company,  adopted  what  is  gen- 
erallv  known  as  its  '* Factor v  Seal"  trademark,  consist- 
ing  of  tin*  monogram  word  ''Ohio,"  being  the  designating 
or  localizing  wor«l  of  its  corporate  name.  The  words 
**factory  seal"  indicate  that  the  y)ackage  was  filled  and 
sealed  at  the  factory  so  as  to  place  responsibility  in  case 
the  goods  are  found  defective.  The  trade-mark  has  usu- 
ally been  applied  to  cartons  or  packages  containing  bakery 
products  by  printing  it  upon  the  end  seals.  The  founda- 
tion color  of  these  end  seals  or  labels  from  the  commence- 
ment has  been  red.  A  sample  of  such  end  seals  is  sub- 
mitted as  follows: 


NATIONAL  BlSei  IT  COMl'ANV    /  s.   OHIO   liAKLNiJ   ( OMl'ANV 


00 


5.  That  your  petitioner,  the  Ohio  Baking  C  ompany, 
also  registered  its  ^'Factory  Seal"  trade-mark  in  the  Pat- 
ent Office,  the  certilicate  of  registry  being  dated  Decem- 
ber 18,  1900,  and  numbered  3o,:)[)7,  on  an  ai)plication  tih^l 
October  9,  1900.  The  certificate  of  registry  of  such  trade- 
mark will  be  found  in  the  back  of  the  record. 

6.  That  in  Decembia*,  1900,  the  National  Biscuit  Com- 
pany filed  its  bill  of  com])laiiit  in  the  Cuited  States  Cir- 
cuit Court  for  the  Northern  District  of  Ohio,  Eastern 
Division,  charging  your  petitioners  with  infringement  of 
its  '4ner  Seal"  trade-mark,  api)lied  to  packages  and  car- 
tons of  crackers  and  bakerv  ])roducts,  bv  the  use,  bv 
the  Ohio  Baking  Company,  of  its  ''Factory  Seal"  trade- 
mark, the  monogram  word  ''Ohio,"  as  shown  in  the  sam- 
ple above. 

7.  That  in  January,  1901,  a  preliminary  injunction 
order  was  entered  by  his  Honor,  Judge  George  P.  Wanty, 
restraining  your  petitioners,  first,  "from  applying  or 
using  complainant's  'Iner  Seal'  trade-mark,  in  anv  man- 
ner  whatsoever,  upon  or  in  connection  with  bakery  ]»rod- 
ucts,"  as  shown  in  certain  infringing  packages  1,  '2  and 
3;  and,  secondly,  from  putting  up  or  selling  cartons  or 
packages  like  the  packages  1,  2  and  3  or  others  "which 
shall,  by  reason  of  the  collocation  of  size,  shape,  colors, 
lettering,  spacing  and  ornamentation,  present  a  general 
appearance  closely  resembling  complainant's  several  ex- 
hibits respectively"  as  did  the  packages  1,  2  and  3,  but 
at  the  same  time  the  order  provided  that  '*tliis  shall  not 
be  construed  as  restraining  (h^fendants  from  selling  pack- 
ages or  cartons  of  the  size,  weight  and  shape  of  com])lain- 
ant's  packages,  nor  from  using  the  respective  colors  as 
wrappers  for  such  packages,  provided  such  packages  are 
so  differentiated  in  general  appearance  from  said  com- 
plainant's respective  packages  that  they  are  not  calcu- 
lated to  deceive  the  ultimate  ordinarv  purchaser."  (Rec- 
ord, 141-2.) 


Hi 


fi: 


56  NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 

8.  That  an  appeal  was  taken  from  the  injunction  or- 
der entered  by  Judge  Wanty  on  an  assignment  of  errors, 
appearing  at  page  143  of  the  record,  which  appeal  was 
argued  in  the  United  States  Circuit  Court  of  Appeals  for 
the  Sixth  Circuit  in  due  course,  resulting  in  an  order  by 
said  Court  of  Appeals  reversing  the  decree  of  Judge 
Wanty,  so  far  as  the  infringement  of  the  trade-mark  was 
concerned,  but  affirming  his  decision  so  far  as  simulating 
complainant's  wrappers  was  concerned.  In  accordance 
with  such  order,  a  mandate  was  issued  and  tiled  in  the 
court  below  on  the  24th  day  of  June,  1901,  as  and  for  its 
judgment  in  the  case.     (Record,  147.) 

9.  That  from  the  entry  of  the  order  of  injunction  by 
Judge  Wanty  until  the  24th  day  of  June,  1901,  when 
the  mandate  was  filed  in  the  court  below,  your  petitioner, 
the  Ohio  Baking  Company,  discontinued  the  use  of  its 
end  seals  containing  its  trade-mark — the  monogram 
word  *'Ohio'* — but  when  the  mandate  was  filed  on 
the  24th  of  June,  1901,  it  again  began  to  use  the  same 
trade-mark — the  monogram  word  **Ohio" — on  its  end 
labels  precisely  the  same  in  every  respect  as  it  had  used 
them  before  the  decision  of  Judge  Wanty;  but  it  used 
such  end  labels  and  trade-marks  on  packages  differing  in 
the  coloring  and  ornamentation  of  their  wrappers  from 
the  original  packages  1,  2  and  3,  which  had  been  enjoined. 
This  was  the  only  change  made — the  change  in  the  wrap- 
pers. 

10.  That  thereupon  the  National  Biscuit  Company 
moved  before  his  Honor  Judge  Henry  F.  Severens,  who 
was  one  of  the  judges  who  had  heard  and  decided  the 
case  in  the  Court  of  Appeals,  to  have  your  petitioners  at- 
tached for  contempt  of  court ;  and  the  charge  and  denial 
of  contempt  were  argued  before  him,  and  on  the  24th 
day  of  August,  1901,  an  order  was  entered  by  him  dis- 
charging the  rule  to  show  cause,  etc.  The  opinion  of 
Judge  Severens  will  be  found  at  page  149  of  the  Record, 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


57 


and  the  order  entered  under  such  opinion  will  be  found 
at  page  150. 

11.  That  thereupon  proof  for  final  hearing  was  taken 
by  the  parties  respectively  and  the  cause  brought  on  for 
argument  before  his  Honor  Judge  Francis  J.  Wing,  on 
the  27th  day  of  March,  1903.  Judge  Wing  ordered  a 
decree  to  be  entered  against  your  petitioners  both  as  to 
the  infringement  of  the  trade-mark  and  as  to  the  simu- 
lation of  the  wrappers  of  the  cartons  or  packages.  This 
decree  was  entered  on  the  22nd  day  of  May,  1903,  and 
will  be  found  beginning  at  page  153  of  the  Record.  A 
perpetual  injunction  was  granted  restraining  your  peti- 
tioners both  as  to  the  trade-mark  and  as  to  the  simula- 
tion, and  the  case  referred  to  a  Master  for  an  assessment 
of  damages  and  profits. 

12.  That  your  petitioners  thereupon  prayed  an  appeal 
from  the  order  and  decision  of  Judge  Wing  to  the 
United  States  Circuit  Court  of  Appeals  for  the  Sixth 
Circuit,  in  which  court  the  appeal  was  duly  argued,  and 
on  or  about  the  21st  day  of  January,  1904,  decided  by 
said  court,  affirming  Judge  Wing's  decision.  (Rec,  170; 
127  Fed.  Rep.,  116.) 

13.  That  your  petitioner  attach  hereto  and  submit  here- 
with, as  a  part  hereof,  a  certified  printed  copy  of  the 
record  and  the  opinion  of  the  United  States  Circuit  Court 
of  Appeals  affirming  the  decision  of  Judge  Wing,  as  the 
same  are  on  file  in  the  office  of  the  clerk  of  the  United 
States  Circuit  Court  of  Appeals  for  the  Sixth  Circuit. 

14.  That  your  petitioners  have  been  aggrieved,  and, 
as  they  believe,  a  miscarriage  of  justice  has  been  cau>sed 
in  this  case: 

By  the  confusion  into  which  the  Circuit  Court  and  the 
Court  of  Appeals  appear  to  have  fallen  as  to  the  law 
relating  to  trade-marks  proper  and  the  law  governing 
unfair  competition; 


I'  > 


i 


58 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


By  the  conclusion  of  the  Court  of  Appeals  that  the 
suit  was  not  founded  on  the  complainant's  registered 
trade-mark,  and,  therefore,  not  subject  to  the  same  rides 
of  construction  as  govern  registered  trade-marks; 

By  giving  to  the  complainant's  ''Iner  SeaV  trade- 
mark, both  in  the  Circuit  Court  and  in  the  Court  of  Ap- 
peals, a  broader  construction  than  the  complainant's 
pleadings  and  registration  justified,  inasmuch  as  the  bill 
of  complaint  and  the  registration  both  stated  that  it  con- 
sisted in  certain  things  and  features; 

By  apparently  considering  that  the  bill  was  for  un- 
fair competition  in  trade  rather  than  for  infringement 
of  a  technical  trade-mark,  and  yet  enjoining  your  peti- 
tioners as  for  the  infringement  of  a  technical  trade-mark; 

By  protecting  the  complainant  in  the  use  of  its  trade- 
mark when  ''printed  in  white  letters  upon  a  vivid  red 
background  of  a  peculiar  shade,''  notwithstanding  the 
statements  of  the  complainant's  registration  that  the 
color  of  the  end  labels  or  seals  was  immaterial; 

By  giving  the  complainant  a  practical  monopoly  of 
the  color  red  as  a  background  for  end  seals  or  labels; 

By  finding  infringement  of  the  ''Iner  Seal"  trade- 
mark because  the  ''Factory  Seal"  trade-mark  was  print- 
ed in  white  letters  on  a  red  background; 

By  protecting  the  complainant  in  the  use  of  red  for 
its  end  seals  or  labels  notwithstanding  it  was  not  using 
red  end  seals  exclusively  at  the  time  the  Ohio  Baking 
Company  began  to  wse  red  end  seals  or  labels,  but  was 
using  other  colors  as  well; 

By  not  holding  that  the  complainant  had  aisentitled 
itself  to  relief  in  equity  for  unfair  competition  in  view 
of  the  evidence  that  it  had  adopted  "substantially  all  col- 
ors" (Q.  24,  Rec.  13)  for  the  wrappers  of  its  cartons  or 
packages,  thus  seeking  to  monopolize  all  colors; 

By  holding  that  the  "Factory  Seal"  trade-mark  when 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY  59 


printed  on  a  red  background  and  applied  to  the  ends  of 
cracker  or  biscuit  cartons  was  an  infringement  of  the 
"Iner  Seal"  trade-mark,  thus  attaching  importance  to 
the  color  of  the  background  on  the  trade-mark  branch  of 
the  case; 

By  attaching  importance  in  the  trade-mark  branch  of 
the  case  to  the  manner  in  which  the  "Factory  Seal" 
trade-mark  had  been  used; 

By  holding  that  there  had  been  an  improper  simula- 
tion of  the  complainant's  wrappers  in  view  of  the  fact 
that  the  complainant,  in  order  to  match  up  the  color  and 
appearance  of  the  defendant's  packages  1,  2  and  3,  held 
to  be  an  improper  simulation,  was  obliged  to  bring  in 
packages  from  its  Chicago  and  Toledo  factories; 

By  holding  that  the  "careless  purchaser  asking  for  a 
box  'of  those  red  seal  crackers'  would  take  the  'Factory 
Seal'  goods,  thinking  he  was  getting  the  'Iner  Seal' 
goods,"  thus  making  the  action  of  a  careless  person  in- 
stead of  an  ordinary  purchaser  determinative  of  the 
probability  of  deception; 

By  disregarding  the  fact  that  the  red  color,  white  fig- 
ures and  letters,  clipped  corners,  size  of  seal,  etc.,  were 
shown  by  the  evidence  to  be  matters  of  utility  instead 
of  mere  fancifid  or  arbitrary  features; 

By  applying  the  abstract  principle  "that  as  to  do- 
mestic commerce  a  person  might  adopt  and  use  a  differ- 
ent trade-mark  than  that  registered"  to  this  case  where 
the  complainant  has  not  adopted  and  has  not  used  a 
"different"  trade-mark,  but  identically  the  one  regis- 
tered; and 

By  affirming  the  decision  of  Judge  Wing  and  in  not 
reversing  such  decision. 

Wherefore,  your  petitioners  pray  tliat  this  Honor- 
able Court  will  take  cognizance  of  the  matters  herein 
set  forth  and  referred  to  and  will  grant  unto  your  peti- 
tioners a  writ  of  certiorari  requiring  said  cause  and  the 


r  1 


I  ! 


60 


NATIONAL  BISCUIT  COMPANY  vs.  OHIO  BAKING  COMPANY 


record  thereof  to  be  certified  to  it  by  the  United  States 
Circuit  Court  of  Appeals  for  the  Sixth  Circuit,  for  its 
review  and  determination,  pursuant  to  the  provisions  of 
the  statute  in  such  case  made  and  provided,  and  that  your 
petitioners  may  have  such  other  and  further  relief  in 
the  premises  as  the  nature  and  circumstances  of  their 
ease  may  require. 

And  your  petitioners  will  ever  pray,  etc. 

The  Ohio  Baking  Co., 
Gteorge  E.  Collings, 
Stephen  C.  Morris. 


United  States  of  America,  Northern  District  of  Ohio, 
State  of  Ohio,  Cuyahoga  County,  ss: 

George  E.  Collings,  president  of  the  Ohio  Baking 
Company,  one  of  the  above  named  petitioners,  being  duly 
sworn,  upon  oath  says  that  he  has  read  the  foregoing 
petition  and  knows  the  contents  thereof  and  that  the 
same  is  true  in  substance  and  matter  of  fact. 

George  E.  Collings. 

Subscribed  and  sworn  to  before  me  this  2nd  day  of 
September,  1904. 

F.  T.  Sholes, 
(seal)  Notary  Public. 

•  We  hereby  certify  that  the  foregoing  stated  grounds 
in  support  of  the  petition  for  a  writ  of  certiorari  in  the 
above  entitled  cause,  are,  in  our  opinion,  well  founded 
in  point  of  law. 

Thomas  A.  Banning, 
Ephraim  Banning, 
Counsel  for  Petitioners. 


national  biscuit  company  vs.  OHIO  baking  company 


61 


ORDER  DENYING  PETITION. 

Supreme  Court  of  the  United  States. 

No.  382,  October  Term,  19U4. 


The  Ohio  Baking  Company  ei  ah, 

Petitioners, 
vs. 
National  Biscuit   Company 


>v 


J 


On  petition  for  writ  of  certiorari  to  the  United  States 
Circuit  Court  of  Appeals  for  the  Sixth  Circuit. 

On  consideration  of  the  petition  for  a  writ  of  certiorari 
herein  to  the  United  States  Circuit  Court  of  Appeals  for 
the  Sixth  Circuit,  and  of  the  argument  of  counsel  there- 
upon had,  as  well  in  support  of  as  against  the  same.  It 
is  now  here  ordered  by  the  Court  that  said  petition  be, 
and  the  same  is  hereby  denied. 

October  17,  1904. 

A  true  copy. 
Test:    James  H.  McKenney, 

Clerk  of  the  Supreme  Court  of  the  United  States, 


195  U.  S.,  630. 


^l^^^jWllillll 


Itatnrt  Court  of  tlj?  l^nxtth  ^tatf  a 


Norther:n^  District  of  Ohio 


Eastern  Division 


NATIONAL  BISCUIT  COMPANY  ^ 

Complainant, 
rs. 


THE  OHIO  BAKING  COMPANY,  STEPHEN 

C.  MORRIS  and  GEORGE  E.  COLLINGS. 

Ifefendants. 


> 


IN  EQUITY 


ORDER  FOR  FINAL  DECREE 


OFFIELD,  TOWLE,  GRAVES  &  OFFIELD 
EARL  D.  BABST 

For  Complainani. 

KLINE,  CLEVENGER,  BUSS  &  HOLLIDAY 

For  Defendants. 


NATIONAL  BISCUIT  COMPANY   rs.  OHIO  BAKING  COMl'ANY 

ORDER   FOR   FINAL   DECREE. 


65 


The  United  States  of  America, 

Northern  District  of  Ohio, 

Eastern  Division. 


ss. 


At  a  stated  term  of  the  District  Court  of  the  United 
States,  within  and  for  the  Eastern  Division  of  the  North- 
ern District  of  Ohio,  begun  and  held  at  the  City  of  Cleve- 
land, in  said  District,  on  the  first  Tuesday  in  October, 
being  the  7th  day  of  said  month,  in  the  year  of  our  Lord 
one  thousand  nine  hundred  and  thirteen,  and  of  the  Li- 
dependence  of  the  United  States  of  America,  the  one 
hundred  and  thirty-eighth,  to-wit:  on  Monday,  the  3rd 
day  of  November  A.  D.  1913. 

Present: — Honorable   William   L.   Day,   United   States 

District  Judge. 

Among  the  proceedings  then  and  there  had  were  the 
following,  to-wit : 


National  Biscuit  Company        ^ 

vs.  y 


No.  5.     Equity. 


vs.  r 

The  Ohio  Baking  Company  et  al.   J 

Pursuant  to  stipulation  filed  by  counsel  in  this  cause, 
It  is  ordered,  that  the  defendants  having  made  settle- 
ment of  all  claims  for  profits,  damages  and  costs  and 
otherwise,  arising  hereunder,  the  reference  to  the  Mas- 
ter shall  be  withdrawn,  and  the  interlocutor^^  decree  here- 
tofore entered  in  this  cause  be  made  final,  such  decree 
having  been  affirmed  by  the  United  States  Circuit  Court 
of  Appeals  for  the  Sixth  Circuit,  upon  appeal,  and  the 
Supreme  Court  of  the  United  States  having  refused  to 
disturb  said  decree  upon  certiorari  petition  filed  by  de- 
fendants ;  and  it  is  further  ordered  that  the  plaintiff  shall 
pay  all  costs  herein,  as  taxed  by  the  Court,  now  remain- 
ing unpaid. 


66 


NATIONAL  BISCLIT  COMl'ANY   r«.  OHIO  BAKING  COMPANY 


The  United  States  of  America,] 
Northern  District  of  Ohio,    [ss. 
Eastern  Division.  J 

I,  B.  C.  Miller,  Clerk  of  the  District  Court  of  the 
United  States,  within  and  for  said  District,  do  hereby 
certify  that  1  have  compared  the  within  and  foregoing 
transcript  with  the  original  '^ Order  for  Final  Decree''  en- 
tered upon  the  Journal  of  the  proceedings  of  said  Court 
in  the  therein  entitled  cause,  at  the  term,  and  on  the  dav 
therein  named;  and  do  further  certify  that  the  same  is 
a  true,  full  and  complete  transcript  and  copy  thereof. 

Witness,  my  official  signature,  and  the  seal  of  said 
Court  at  Cleveland,  in  said  District,  this  5th  day  of  No- 
vember, A.  D.  1913,  and  in  the  138th  year  of  the  Inde- 
pendence of  the  United  States  of  America. 

B.  C.  Miller, 

Clerk. 
By  Anna  H.  Elliott, 

Deputy  Clerk. 


©irrutt  Qlnurt  at  %  llnttrb  S^tatPB 


Western  District  of  New  York 


NATIONAL  BISCUIT  COMPANY 

Complahwnt, 


i». 


WILLIAM  DEININQER,  HENRY  E.  DEIN- 
INGER,  LOUIS  C.  DEININQER  and 
FREDERICK  C.  J.  DEININOER,  co- 
partners, and  doing  business  under  the 
firm  name  and  style  of  DEININOER 
BROTHERS, 

Defendants. 


IN  EQUITY 


DECREE  AND  INTUNCTION 


charles  k.  offield 
adelbert  moot 
earl  d.  babst 

For  Coiiiplainaut. 
FREDERICK  F.  CTIURCH 

for  Defendants. 


•T^ 


68 


NATIONAL  BISCUIT  COMPANY  vs.  DEININGER 


r 


Final  Decree. 


NATIONAL  BISCUIT  COMPANY  V8,  DEININGER  69 

FINAL  DECREE. 

United  States  CiRCinx  Court. 
Western  District  of  New  York. 

National  Biscuit  Company, 

vs. 
William  Deininger,  Henry  E. 
Deininger,  Louis  C.  Deininger, 
and  Frederick  C.  J.  Deininger, 
copartners  and  doing  business 
under  the  firm  name  and  style 
of  Deininger  Brothers. 

This  cause  coming  on  to  be  heard  upon  the  pleadings 
as  filed,  Mr.  Charles  K.  Offield  appearing  in  behalf  of 
the  complainant  and  Mr.  Frederick  F.  Church  in  behalf 
of  defendants,  and  it  appearing  to  the  Court  that  said 
defendants  do  not  desire  further  to  contest  or  defend 
this  action,  but  admit  the  truth  of  the  allegations  in  the 
bill  of  complaint ;  and  the  said  defendants  have  tendered 
and  paid  the  costs  to  the  date  of  this  cause  as  taxed  by 
the  clerk,  and  also  have  settled  and  paid  the  damages 
caused  to  complainant  by  the  commitment  of  the  un- 
lawful acts  as  set  forth  in  the  bill  of  complaint;  and 
that  no  remaining  question  is  presented  except  the  mat- 
ter relating  to  the  granting  of  an  injunction.  It  is  there- 
fore ordered,  adjudged  and  decreed  that  an  injunction 
issue  under  and  in  accordance  with  the  allegations  of, 
and  the  prayer  of,  the  bill  of  complaint  filed  herein,  and 
that  this  decree  and  order  be,  and  is  final. 

John  E.  Hazel, 

U,  S,  J. 

Endorsed:  Circuit  Court  of  U.  S.,  Western  Dist.  of 
N.  Y.,  National  Biscuit  Company  agst  William  Deininger 
et  al.  Final  Decree.  Adelbert  Moot,  Counsel  for  plain- 
tiff, 45  Erie  County  Savings  Bank  Building,  Buffalo, 
N.  Y.,  U.  S.  Circuit  Court,  Western  Dist.  of  N.  Y.  Filed 
Jul.  30,  1901.    Harris  S.  Williams,  Clerk. 


(38 


NATlONAr.  HISC'LIT  COMPANY  vs.  TtFASl'SiiKH 


NATIONAL  BISCTIT  rOMPANY  vs.  DEININflER 


69 


r  Final  Decrcf^. 


FINAL  DECREE. 

United  States  Circuit  Court. 
AVestern  District  of  New  York. 

National    lUseuit   Company, 

vs. 
William  Duininger,  Henry  E. 
Deining-er,  Louis  C.  Deininger, 
an<l  Frederick  C.  J.  Deininger, 
copartners  and  doing  business 
under  the  firm  name  and  stvle 
of  Deininger  Brothers. 

This  cause  coming  on  to  be  heard  upon  tlie  pleadings 
as  filed,  Air.  Charles  K,  Offield  appearing  in  behalf  of 
the  complainant  and  Mr.  Frederick  F.  Church  in  behalf 
of  defendants,  and  it  a|)i)earing  to  tlu^  Court  that  said 
defendants  do  not  desire  further  to  contest  or  defend 
this  action,  but  admit  the  truth  of  the  allegations  in  the 
bill  of  complaint;  and  the  sai<l  defendants  have  tendered 
and  paid  the  costs  to  the  date  of  this  cause  as  taxed  by 
the  clerk,  and  also  have  settled  and  paid  the  damages 
caused  to  complainant  by  the  commitment  of  the  un- 
lawful acts  as  set  forth  in  the  bill  of  complaint;  and 
that  no  remaining  question  is  presented  except  the  mat- 
ter relating  to  the  granting  of  an  injunction.  It  is  there- 
fore ordered,  adjudge<l  and  decreed  that  an  injunction 
issue  under  and  in  accordance  with  the  allegations  of, 
and  the  prayer  of,  the  bill  of  complaint  filed  herein,  and 
that  this  decree  and  order  l>e,  and  is  final. 

John  R.  Hazel, 

U.  S.  J. 

Endorsed:  Circuit  Court  of  IL  S.,  Western  Dist.  of 
N.  Y.,  National  Bis(*uit  Company  a(jst  William  Deininger 
et  al.  Final  Decree.  Adelbert  Moot,  Counsel  for  plain- 
tiff, 45  Erie  County  Savings  Bank  Building,  Buffalo, 
N.  Y.,  IT.  8.  Circuit  Court,  Western  Dist.  of  N.  Y.  Filed 
Jul.  30,  1001.     Harris  S.  W^liams,  Clerk. 


\A 


1  I  i 


III 


<. 


70 


NATIONAL  BISCUIT  COMPANY   vs.  DEININGBR 


United  States  of  America,       |  gg 
[Western  District  of  New  York.  J 

I,  Harris  S.  lYilliams,  Clerk  of  the  Circuit  Court  of  the 
United  States,  for  the  Western  District  of  New  York,  do 
hereby  certify  that  I  have  compared  the  annexed  oopy  of 
Final  Decree  in  re  National  Biscuit  Company  vs,  Will- 
iam Deininger  et  al.  with  the  original  entered  and  on  file 
in  this  office,  and  that  the  same  is  a  correct  transcript 
tlierefrom,  and  of  the  whole  of  said  original. 

And  I  further  certify  that  I  am  the  officer  in  whose 
custody  it  is  required  by  law  to  be. 

In  Testimony  Wliereof,  I  have  caused  the  seal  of  the 
said  court  to  be  affixed  at  the  City  of  Buffalo,  in  said 
District,  this  27th  day  of  May,  A.  D.  1904. 

Harris  S.  Williams, 

Clerlz, 


n 
i' 


NATIONAL   BISCUIT   rOMI'ANY    vh.   DEININC.ER 


71 


^^wam.^*m 


\ 


70 


NAIKKXAI.    ItLSCnr    COMPANY 


vs.    liKININGKH 


TJkitki)  Statks  of  America,       \  ^g 
?^esti:hx    Disthict  of  New  York.(  ' 

T,  ITarris  S.  AVilliams,  Clerk  of  tlie  Circuit  Court  of  the 
T^uitcd  States,  for  the  AVesterii  District  of  N<'w  York,  do 
licreby  certiiy  that  1  liave  coiny)ared  the  annexed  copy  of 
Final  Decree  in  re  National  Biscuit  Comi)aiiy  vs.  Will- 
iam Deiiiino-cr  cf  ^,/.  ^vith  tlie  original  entered  and  on  file 
in  tliis  office,  and  that  the  same  is  a  correct  transcript 
tlierefrom,  and  of  the  whole  of  said  orio:inal. 

And  T  further  certify  that  I  am  the  officer  in  whose 
custody  it  is  required  hy  law  to  be. 

In  Testimony  A^liereof,  I  have  caused  the  seal  of  the 
said  court  to  he  affixed  at  the  City  of  Buffalo,  in  said 
District,  this  27th  day  of  May,  A.  *D.  1904. 

Harris  S.  AVilliams, 

Clerk, 


national  ius< nr  ( omtany  is.  iu.inincku 


71 


^'t'^ii;^ 


5i\vO<J 


\5^  v^^v^\YOci^^'rie\\\\ 


e 


CiL-i.: 


i)l.\^\i\^l}A  ^iV^^ 


i?^o/T«/cywftX  *>*-  o\xnyi. 


S;i^.<r^^'  ^^<^-^  '/&/ 


II 


72 


NATIONAL  BISCUIT  COMPANY  vs.  DEININGBR 


INJUNCTION. 

United  States  of  America,      | 
Western  District  of  New  York.  J  ^^' 

The  President  of  the  United  States,  to  William  Deininger, 
Henry  E,  Deininger,  Louis  C.  Deininger  and  Frederick 
C.  J.  Deininger  J  and  each  of  them,  and  their  and  each  of 
their  servants,  agents,  and  employes  and  all  claiming  or 
holding  through  or  under  them,  Greeting: 

Whereas,  the  National  Bisouit  Company  has  lately  ex- 
liibited  its  bill  of  complaint  against  the  said  William  Dein- 
inger, Henry  E.  Deininger,  Louis  C.  Deininger  and  Fred- 
erick C.  J.  Deininger,  copartners  and  doing  business 
under  the  firm  name  of  Deininger  Brothers,  as  defend- 
ants, in  the  Circuit  Court  of  the  United  States  for  the 
Western  District  of  New  York,  before  the  Judges  of  said 
Court,  praying  to  be  relieved  touching  the  matters  there- 
in complained  of;  and 

Whereas,  by  a  final  decree  of  said  court  made  on  the 
30th  day  of  July,  1901,  it  was  ordered  that  a  writ  of  in- 
junction issue  under  the  seal  of  said  Court  under  and  in 
accordance  with  the  allegations  of,  and  the  prayer  of 
said  bill  of  complaint. 

Now,  Therefore,  in  consideration  of  the  pr(»mises  you, 
the  said  William  Deininger,  Henry  E.  Deininger,  Louis  C. 
Deininger  and  Frederick  C.  J.  Deininger,  and  each  of  you, 
and  your,  and  each  of  your,  servants,  agents  and  em- 
ployes, and  all  claiming  or  holding  through  or  under  you 
or  them,  are  hereby  strictly  commanded  and  enjoined 
under  the  pains  and  penalties  which  may  fall  upon  you 


NATIONAL  BISCUIT  COMPANY   vs.   IHUXIXGKR 


73 


and  each  of  you  in  case  of  disobedience,  that  you  and  each 
of  you,  do  absolutely  desist  and  abstain,  forthwith  and 
forever,  from  the  manufacture,  use  or  sale  of  bakery 
products  containing  the  complainant's  ribbon-tying  trade- 
mark, label,  and  design,  upon  any  carton  for  bakery 
products  having  a  wrapper  or  label  thereon  simulating 
the  ribbon-tying  design  and  effect  disclosed  by  complain- 
ant's Avrapper  and  label,  and  do  absolutely  de- 
sist and  abstain  forthwith  and  forever  from  man- 
ufacturing, using  or  selling  labels  or  cartons  in, 
or  for,  or  with,  bakery  products  containing  the 
red  end  seal,  sign  or  s^Tnbol  of  complainant,  hav- 
ing therein  circular  and  straight  white  lines  ar- 
ranged practically  at  right  angles  to  each  other;  and 
from  in  any  manner  whatsoever,  handling,  advertising, 
or  selling  bakery  products  or  packages  containing  there- 
on complainant's  trade-marks  or  imitation  or  simulation 
thereof,  or  from  using  complainant's  said  trade-marks  or 
packages  or  any  imitation  thereof  upon  any  wrapper, 
package,  box  or  carton,  or  by  any  means  that  may  be 
adopted  in  the  sale  of  their  bakery  products  of  any  de- 
scription; or  any  imitation  of  complainant's  said  trade- 
marks or  packages,  labels  or  wrappers  that  may  be  in 
any  way  calculated  to  deceive  or  mislead,  and  otherwise 
do  absolutely  desist  and  abstain,  forthwith  and  forever, 
in  every  way,  from  fraudulently  using  complainant's 
trade-marks,  packages,  labels  or  wrappers,  or  any  imita- 
tion or  simulation  thereof,  in  the  sale  of  bakery  products, 
or  from  violating  or  infringing  the  equitable  rights  of 
complainant  in  the  premises  herein  complained  of  and 
set  forth. 

Witness  the  Honorable  ]\relville  W.  Fuller,  Chief 
Justice  of  the  I'^nited  States  of  America,  at  the  Citv  of 
Buffalo,  N.  Y.,  in  said  district,  this  5th  dav  of  Februarv 


74 


NATIONAL  BISCUIT  COMPANY  vs.  DEININGER 


one  thousand  nine  hundred  and  two,  and  of  our  Independ- 
ence, the  one  hundred  and  twenty-sixtli. 

Haebis  S.  Williams, 

Clerk. 


OfFIELD,    ToWLE   &   LlNTHICI'M, 

Solicitors  for  Complainant. 


United  States  of  America,      | 
Western  District  of  New  York.( 

I,  Harris  S.  Williams,  clerk  of  the  Circuit  Court  of  the 
United  States,  for  the  Western  District  of  New  York,  do 
hereby  certify  that  I  have  compared  the  annexed  copy  of 
Injunction  in  re  National  Biscuit  Co.  vs.  William  Dein- 
inger  et  al.  with  the  original  entered  and  on  file  in  this 
office,  and  that  the  same  is  a  correct  transcript  therefrom, 
and  of  the  whole  of  said  original. 

And  I  further  certify  that  I  am  the  officer  in  whose  cus- 
tody it  is  required  by  law  to  be. 

In  Testimony  Whereof,  I  have  caused  the  seal  of  the 
said  court  to  be  affixed  at  the  City  of  Buffalo,  in  said  Dis- 
trict, this  27th  day  of  May,  A.  D.  1904. 

Harris  S.  Williams, 

ClerJc. 


(Hmuxt  (Hmvt  at  t\)t  Unxtth  ^tat^a 

Northern  District  of  Illinois 


Northern  Division 


NATIONAL  BISCUIT  COMPANY 

Complainant^ 


vs. 


DAKE  CRACKER  COMPANY,  J.  A.  BER« 
NARD  HOSSACK,  WILLIAM  P.  FEN- 
NELL  and  ABEL  L.  ALLEN, 

Dcfendunls. 


> 


IN  EQUITY 


OPINION,  INJUNCTION  AND  ORDER 
MAKING  INJUNCTION  PERPETUAL 


OFFIELD,  TOWLE  &  LINTIIICUM 
EARL  D.  BABST 

For  Complainant. 

W.  p.  FENNELL 

For  Defendants. 


V 


NA'i  K>NAL   BISCUIT  COMPANY    vs.   DAKE   CRACKER  COMPANY         /  i 


OPINION. 


In  the  United  States  Ciecuit  Coukt/ 

Northern  Distbict  of  Illinois, 

Northern  Division. 

KOHLSAAT,  District  Judge. 


No.  26,043. 


This  matter  comes  on  for  hearing  upon  complainant's 
motion  for  a  preliminary  injunction  restraining  defend- 
ant corporation  and  the  individual  defendants  from  the 
use  of  the  word  ^*Dake''  either  alone  or  in  connection 
with  other  words,  upon  or  with  reference  to  crackers  or 
other  bakery  products. 

I  am  of  the  opinion  that  the  moving  papers  establish 
the  property  right  in  complainant  to  the  use  of  the  word 
**Dake''  in  connection  with  bakery  products.  Several  de- 
fenses are  interposed  among  which  is  that  of  abandon- 
ment. This  I  consider  an  affirmative  defense,  the  burden 
of  establishing  which  is  upon  defendants.  The  affidavits 
on  this  point  are  conflicting,  but  I  deem  the  showing  as 
to  continued,  though  diminished,  use  by  complainant,  not 
overcome  by  defendants'  affidavits. 

The  other  defenses  I  do  not  think  available. 

A  preliminary  injunction  may  be  entered,  restraining 
defendants  from  using  the  word  ^^Dake"  in  connection 
with  bakery  products,  either  alone  or  with  prefixes  or 
suffixes. 

See  International  Silver  Co.  v,  Kogers  Co.  et  al.,  110 
Fed.,  955. 

(Endorsed)  Filed  May  25,  1904,  Marshall  E.  Samp- 
sell,  Clerk. 


'    ( 

!     -11 


78       NATIONAL  BISCUIT  COMPANY   vs.  DAKE   CRACKER   (  OMPANY 


Northern  District  of  Illinois,!    . 
Northern  Division.  )  ^^* 

I,  Marshall  E.  Sampsell,  Clerk  of  the  Circuit  Court  of 
the  United  States  for  said  Northern  District  of  Illinois, 
do  hereby  certify  the  above  and  foregoing  to  be  a  true 
and  complete  copy  of  tke  Opinion,  filed  in  said  Court  on 
the  25th  day  of  May  A.  D.  1904,  in  the  cause  wherein  Na- 
tional Biscuit  Company  is  the  complainant  and  Dake 
Cracker  Co.  et  al.  are  the  defendants  as  the  same  ap- 
pears from  the  original  records  thereof  now  remaining 
in  my  custody  and  control. 

In  Testimony  whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court  at  my  office  in  Chicago, 
in  said  District,  this  26th  day  of  May,  A.  D.  1904. 

Marshall  E.  Sampsell, 

Clerk, 


national  biscuit  company  v8.  dake  cracker  company     79 


INJUNCTION. 

Circuit  Court  of  the  United  States  of  America, 

Northern  District  of  Illinois,  J-ss. 

Northern  Division. 

THE  UNITED  STATES -OF  AMERICA, 

To  Dake  Cracker  Company,  a  corporation,  and  J.  A, 
Bernard  Hossack,  William  P.  Fennell  and  Abel  L.  Al- 
len, doing  business  jointly  with  and  as  officers  and  man- 
agers of  Dake  Cracker  Company,  and  to  your  Coun- 
selors, Attorneys,  Solicitors,  Trustees,  Agents,  Clerks^ 
Employes,  Servants  and  Workmen,  and  to  each  and 
every  of  you.  Greeting: 

Whereas,  it  hath  been  represented  to  the  Judges  of 
our  Circuit  Court  of  the  United  States  for  the  Northern 
Division  of  the  Northern  District  of  Illinois  in  Chancery 
sitting,  on  the  part  of  National  Biscuit  Company,  com- 
plainant in  its  certain  bill  of  complaint,  exhibited  in  our 
said  Circuit  Court,  on  the  Chancery  side  thereof,  before 
the  Judges  of  said  Court,  against  you,  the  said  Dake 
Cracker  Company,  a  corporation,  and  J.  A.  Bernard  Hos- 
sack,  William  P.  Fennell  and  Abel  L.  Allen,  doing  busi- 
ness jointly  with  and  as  officers  and  managers  of  Dake 
Cracker  Company,  to  be  relieved  touching  the  matters 
complained  of.    In  which  said  bill  it  is  stated,  among 
other  things,  that  you  are  combining  and  confederating 
with  others  to  injure  the  complainant  touching  the  mat- 
ters set  forth  in  said  bill,  and  that  your  actings  and 
doings  in  the  premises  are  contrarj^  to  equity  and  good 
conscience.    And  it  being  ordered  that  a  Writ  of  Pre- 
liminary Injunction  issue  out  of  said  Court,  upon  said 
bill,  enjoining  and  restraining  you,  and  each  of  you,  as 
prayed  for  in  said  bill;  We,  therefore,  in  consideration 


80 


NATIONAL  BISCUIT  COMPANY  vs.  DAKE  CRACKER  COMPANY 


thereof,  and  of  the  particular  matters  in  said  bill  set  forth, 
do  strictly  command  you,  the  said  Dake  Cracker  Company, 
a  corporation,  and  J.  A.  Bernard  Hossack,  William  P. 
Fennell  and  Abel  L.  Allen,  doing  business  with  and  as  of- 
ficers and  managers  of  Dake  Cracker  Company,  your 
Counselors,  Attorneys,  Solicitors,  Trustees,  Agents, 
Clerks,  Employes,  Servants  and  Workmen,  and  each  and 
ever>^  of  you,  that  you  do  absolutely  desist  and  refrain 
FROM  in  any  manner  whatsoever,  manufacturing,  han- 
dling, using,  selling  or  advertising  the  bakery  products 
all  packages  containing  thereon,  or  in  connection  there- 
with your  orator's  said  trade-mark  or  name,  or  any  imita- 
tion or  simulation  thereof;  also,  from  using  your  orator's 
trade  name  or  mark  on  any  package  of  any  description, 
or  any  simulation  or  imitation  thereof,  upon  any  wrapper, 
box,  carton,  or  barrel,  or  by  any  means  whatsoever  that 
may  be  adopted  in  the  sale  of  bakery  products  of  any 
description,  that  may  be  in  any  way  calculated  to  de- 
ceive and  otherwise  enjoining  and  restraining  in  every 
way  the  said  defendant  from  fraudulently  using  said 
trade-mark,  or  trade  name,  or  any  simulation  or  imita- 
tion thereof  in  the  manufacture,  use  or  sale  of  bakery 
products,  or  from  violating  or  infringing  tlie  equitable 
rights  of  your  orator  in  the  premises  herein  complained 
of  and  set  forth,  or  from  using  the  word  *^Dake"  in  con- 
nection with  bakery  products,  either  alone  or  with  pre- 
fixes or  suffixes,  until  this  Honorable  Court,  in  Chancery 
sitting,  shall  make  other  order  to  the  contrary.  Hereof 
fail  not,  under  the  penalty  of  what  the  law  directs. 

To  the  Marshal  of  the  Northern  District  of  Hlinois, 
to  execute  and  return  in  due  form  of  law. 

Witness  The  Hon.  Melville  W.  Fuller,  Chief  Justice 
of  the  IJnited  States  of  America,  at  Chicago,  in  said  Dis- 
trict, this  30th  day  of  December,  in  the  year  of  our  Lord 


NATIONAL  BISCUIT  COMPANY  vs.  DAKE  (RANKER  COMPANY      81 

one   thousand  nine  hundred   and   one   and  of  our  In- 
dependence the  one  hundred  and  twenty-sixth  year. 

S.  W.   BURNHAM, 

Clerk. 


Northern  District  of  Illinois,! 
Northern  Division.  j 

I,  S.  W.  Burnham,  Clerk  of  the  Circuit  Court  of  the 
United  States,  for  said  Northern  District  of  Illinois,  do 
hereby  certify  the  above  and  foregoing  to  be  a  true  and 
complete  copy  of  an  Injunction  Writ  issued  out  of  this 
Court  on  the  30th  day  of  December,  A.  D.  1901,  in  the 
cause  wherein  the  National  Biscuit  Company  is  the  com- 
plainant and  the  Dake  Cracker  Company  et  al.  are  the 
defendants,  as  the  same  appears  from  the  original  issued 
out  of  and  under  the  seal  of  this  Court. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court  at  my  office  in  Chicago, 
in  said  District,  this  30th  day  of  December,  A.  D.  1901. 

S.  W.  Burnham, 

Clerk. 


82 


NATlONAr.  151SCL1T   COMPANY    08.   DAKE   CRACKKR   COMPANY 


i 


PJ 


•in 


I 


ORDER  MAKING  INJUNCTION  PERPETUAL. 


Circuit  Court  of  the  United  States, 
Northern  District  of  Illinois, 
Northern  Division. 


May  28,  1902. 
Present,  Hon.  Christian  C.  Kolilsaat,  District  Judge. 


National  Biscuit  Company 

vs.  .  ^..  ^v^^..^ . 

Dake  Cracker  Company  and  J.  A.  [Bill  for  Infringement 
Bernard  Hossack.  J      of  Trade  Name,  etc. 


26,043. 
In  Equity. 


This  cause  coming  on  to  be  heard  this  28th  day  of  May, 
1902,  upon  the  pleadings  as  filed,  Messrs.  Offield,  Towle 
&  Linthicum,  attorneys  for  and  appearing  in  behalf  of 
said  complainant,  the  National  Biscuit  Company,  and  Mr. 
W.  P.  Fennell,  attorney  for  and  appearing  in  behalf  of 
the  defendant;  and  it  appearing  to  the  Court  that  said 
defendants  do  not  desire  further  to  contest  or  defend 
this  action,  and  admit  the  truth  of  the  allegations  of  the 
bill  of  complaint ;  and  that  said  defendants  have  tendered 
and  paid  the  costs  in  this  action  as  taxed  by  the  clerk, 
and  have  also  settled  for  and  paid  to  complainant  the 
damages  caused  to  plaintiff  by  the  commitment  of  the 
unlawful  acts  as  set  forth  in  the  bill  of  complaint,  and 
that  no  remaining  question  is  presented  except  and  re- 
lating to  the  matter  of  the  granting  of  the  injunction 
therein. 

It  is  therefore  ordered,  adjudged  and  decreed  that  the 
preliminary  injunction  heretofore  granted  in  this  case 
is  hereby  made  ]>erpetual,  and  that  this  decree  and  order 
be,  and  is,  final. 


, 


NATIONAL   BISCUIT   COMrANY    vs.   DAKK   CUACKKK   COMPANY        83 


Northern  District  of  Illinois,) 


Northern   Division. 


i 


ss. 


I,  Marshall  E.  Sampsell,  CHerk  of  the  Circuit  Court  of 
the  United  States  for  said  Northern  District  of  Illinois, 
do  hereby  certify  the  above  and  foregoing  to  be  a  true  and 
complete  copy  of  the  order  entered  of  record  in  said 
Court  on  the  28th  day  of  May,  A.  D.  1902,  in  the  cause 
wherein  National  Biscuit  Company  is  the  complainant 
and  Dake  Cracker  Company  et  al.  are  the  defendants,  as 
the  same  appears  from  the  original  records  thereof  now 
remaining  in  my  custody  and  control. 

In  Testimony  Whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  court  at  my  office  in  Chicago, 
in  said  District,  this  26th  day  of  May,  A.  D.  1904. 

Marshall  E.  Sampsell, 

Clerk. 


II 


m 


'i 


aitrrmt  (Howrt  at  %  Init^h  BtuUB 


Middle  District  of  Pennsylvania 


NATIONAL  BISCUIT  COMPANY  ^ 

Complainant, 


'•"*. 


LAWRENCE  WALTER 

Defendant. 


IN  EQUITY 


ORDER,  INJUNCTION  AND  DECREE 


CHARLES  K.  OFFIELD 
EARL  D.  BABST 
H.  C.  REYNOLDS 

For  Complainant. 

S.  J.  STRAUSS 

For  Defendant. 


86 


NATIONAL   BISCUIT    COMPANY    vs.    WALTER 


GRAHAM 


CRA  CKERS, 


m 


I  ■ 


";: 


NATIONAL  BISCUIT  COMrANV  i  .<.   WALTER 


S7 


I 


I 


United  States  Circuit  Court,     \ 
Middle  District  of  Pennsylvania.] 


National  Biscuit  Company, 

Complainant, 
vs. 
Lawrence  Walter, 

Defendant. 


■^ 


>- 


In  Equity. 

Motion  for  Injunction. 


INJUNCTION  OKDEK. 

This  cause  coming  on  to  be  heard  upon  the  21st  day  of 
May,  A.  D.  1902,  at  10  o'clock  a.  m.,  upon  motion  for  in- 
junction as  filed,  and  upon  the  pleadings  and  affidavits 
filed  herein,  Messrs.  Charles  K.  Offield  and  H.  C.  Eey- 
nolds,  solicitors  and  of  counsel  for  the  motion,  and  S.  J. 
Strauss  for  the  defendant,  the  court  having  duly  con- 
sidered the  same. 

And  it  appearing  to  the  court,  from  a  bill  of  com- 
plaint, exhibits  and  affidavits  filed  herein,  that  the  mo- 
tion should  be  granted: 

It  is,  therefore,  ordered,  adjudged  and  decreed  that  a 
preliminary  injunction  issue  under,  and  in  accordance 
with  the  allegations  of,  and  the  prayer  of  the  bill  of  com- 
plaint filed  herein,  to  continue  in  effect  until  the  next 
term  of  this  court. 

B.  A.  Archbald, 

District  Judge, 


s(; 


NAIRJ-NAI.    r.lSC  I  1  r    CUMrANY    ».v.    WALTKK 


NATIONAL    I'.ISniT    (  OMI'ANV    is.    WAL'IKK 


bl 


United  States  C'ikclit  ("oikt,     | 
Middle  Disthut  ok  J*exnsvl\axia.j 


National   Biscuit   Conijjauy, 

CompJahiaHt, 

Lawrence  AValter, 

Def('}i(J<n(t. 


■N 


III  Kijuity. 

Motion  for  Tnjinicticm. 


J 


IXJIXCTIOX  OrvDER. 

Tliis  cause  coming  on  to  be  lieard  \\\n)\\  tlie  21st  clay  of 
May,  A.  D.  ]r)'02,  at  10  o'clock  a.  ^r.,  upon  motion  for  in- 
junction as  filed,  and  upon  the  pleadin,c:s  and  allidavits 
filed  herein,  Messrs.  Charles  K.  Offield  and  IF.  i\  Rey- 
nolds, solicitors  and  of  counsel  for  the  motion,  and  S.  J. 
Strauss  for  the  defendant,  the  court  having  duly  con- 
sidered the  same. 

And  it  appearing  to  the  court,  from  a  l)ill  of  com- 
plaint, exhibits  and  affidavits  filed  herein,  that  the  mo- 
tion should  be  granted: 

It  is,  therefore,  ordered,  adjidged  and  deckked  that  a 
preliminary  injunction  issue  under,  and  in  accordance 
with  the  allegations  of,  and  the  prayer  of  the*  bill  of  com- 
plaint filed  herein,  to  contimie  in  effect  until  the  next 
term  of  this  court. 

R.  A.  Akchbald, 

District  Judae. 


I'l 


I  ' 


88 


NATIONAL  BISCUIT  COMPANY  r«.   WALTER 


INJUNCTION. 


I 


CiBCUiT  Court  of  the  United  States  of  America,^ 

Middle  District  of  Pennsylvania.  ]  ®^* 

THE  UNITED  STATES  OF  AMEEICA, 

To  Lawrence  Walter,  and  to  your  Counselors,  Attor- 
neys, Solicitors,  Trustees,  Agents,  Clerks,  Employes, 
Servants  and  Workmen,  and  to  each  and  every  of  you, 
Greeting: 

Whereas,  It  liatli  been  represented  to  the  Ju<lges  of  our 
Circuit  Court  of  the  United  States  for  the  Middle  Dis- 
trict of  Pennsylvania  in  Chancery  sitting,  on  the  part  of 
National  Biscuit  Company,  complainant  in  its  certain 
bill  of  complaint,  exhibited  in  our  said  Circuit  Court,  on 
the  Chancer}^  side  thereof,  before  the  judges  of  said 
court,  against  you,  the  said  Lawrence  Walter  to  be  re- 
lieved touching  the  matters  complained  of.  In  which 
said  bill  it  is  stated,  among  other  things,  that  you  are 
combining  and  confederating  with  others  to  injure  the 
complainant  touching  the  matters  set  forth  in  said  bill, 
and  that  your  actings  and  doings  in  the  premises  are  con- 
trary to  equity  and  good  conscience.  And  it  being  or- 
dered that  a  Writ  of  Preliminary  Injunction  issue  out  of 
said  court,  upon  said  bill,  enjoining  and  restraining  you, 
and  each  of  you,  as  provided  for  in  said  bill;  We,  there- 
fore, in  consideration  thereof,  and  of  the  particular  mat- 
ters in  said  bill  set  forth,  do  strictly  command  you,  the 
said  Lawrence  Walter,  your  Counselors,  Attorneys, 
Solicitors,  Trustees,  Agents,  Clerks,  Employes,  Servants, 
and  Workmen  and  each  and  every  of  you,  that  you  do 
absolutely  desist  and  refrain  from  the  manufacture, 
use  or  sale  of  cartons  or  packages,  or  bakery  products, 
contained  in  cartons,  having  thereon  a  red  label  or  wrap- 


NATIONAL  biscuit   COMPANY   V8.   WALTER 


89 


per  simulating  the  red  label  wrapper  of  complainant; 
and  do  absolutely  desist  and  restrain  from  the  manufac- 
ture, use,  or  sale  of  cartons  or  packages  containing 
bakery  products,  having  thereon  a  red  label  or  wrapper, 
with  accompanying  markings  complained  of;  or  from,  in 
any  manner  whatever,  advertising  or  selling  bakery 
products  or  packages  having  thereon,  substantially,  com- 
plainant's red  label  or  wrapper,  or  any  marking  or  imi- 
tation thereof,  or  simulation  thereof,  that  may  be  in  any 
way  calculated  to,  in  any  way,  mislead  or  deceive;  and 
otherwise  do  absolutely  restrain  from  forthwith,  in  any 
other  way,  fraudulently  using  said  complainant's  red 
label  wrapper  upon  cartons  or  packages,  or  in  connec- 
tion with  the  manufacture  and  sale  of  bakery  products ; 
or  otherwise  violating  or  infringing  the  equitable  rights 
of  complainant,  as  set  forth  and  specified  in  complain- 
ant's bill  of  complaint,  until  this  Honorable  Court,  in 
Chancery  sitting,  shall  make  other  order  to  the  con- 
trary. Hereof  fail  not,  under  the  penalty  of  what  the 
law  directs. 

To  the  Marshal  of  the  Middle  District  of  Pennsylvania 
to  execute,  and  return  in  due  form  of  law. 

Witness,  the  Hon.  Melville  W.  Fuller,  Chief  Justice  of 
the  United  States  of  America,  at  Scranton,  in  said  Dis- 
trict, this  21st  day  of  May  in  the  year  of  our  Lord  one 
thousand  nine  hundred  and  two,  and  of  our  Independence 
the  one  hundred  and  twenty-sixth  year. 

A.  J.  Colburn,  Jr., 

Deputy  Clerk, 


90  NATIONAL   HISCUIT   COMPANY   rs.   WALTEK 


FINAL  DECREE. 

In  the  Circuit  Court  of  the  United  States. 
For  the  Middle  District  of  Pennsylvania. 


National  Biscuit  Company, 

Complainant, 
versus 
Lawrence  Walter, 

Defendant. 


'\ 


No.  7,  October 
Term,  11K}2. 

Bill  for  an  In- 
fringement, etc. 

Unfair  Competition. 


This  cause  comino-  on  to  be  heard  upon  the  23rd  day  of 
April,  A.  D.  1904,  at  ten  o'clock  a.  m.,  upon  the  final  plead- 
ings, and  proofs,  and  the  Court  being  fully  advised  and 
having  duly  considered  the  same, 

It  is  therefore  ordered,  adjudged  and  decreed : 

First:  That  the  said  complainant  has  good  right  and 
title  in  and  to  the  red  label  or  wrapper  used  by  them  in 
the  manufacture  and  sale  of  cartons  or  packages  of  gra- 
ham crackers,  like  or  substantially  like  **  Complain- 
ant's Exhibit,  Complainant's  Label  and  Wrapper  Pack- 
age," identified  by  complainant's  bill  of  complaint  and 
presented  as  an  exhibit  in  this  case. 

Second:  That  the  defendant  has  infringed  and  vio- 
lated the  right  and  title  of  said  complainant,  as  above 
identified,  by  selling  and  purchasing  and  selling  cartons 
or  packages  of  graham  crackers,  having  thereon  a  red 
label  or  wrapper  like  or  substantially  like  complainant's 
red  label  or  wrapper,  and  having  thereon  lettering  and 
marking  like  or  substantially  like  complainant's  letter- 
ing and  marking,  upon  complainant's  exhibit,  and  as 
particularly  shown  by  *' Complainant 's  Exhibit,  Defend- 
ant's Cartons  or  Packages,"  present  as  an  exhibit  in  this 
case. 

Third:     That  this  cause  be  referred    to    Henry    A. 


national  biscuit  COAirANY   i«.    WALTER 


91 


Knapp,  Esq.,  one  of  the  Masters  in  Chancery  in  this 
Court,  to  take  testimony  and  ascertain  and  report  to  this 
Court  the  profits  accruing  to  the  defendant,  by  reason 
of  the  commitment  of  the  unlawful  acts  here  found,  and 
the  damages  accruing  to  the  complainant,  by  reason  of 
such  acts,  with  full  power  to  summon  and  command  the 
attendance  of  the  defendant  for  examination  with  all 
books  and  papers  relevant  to  such  examination,  and  to 
summon  and  command  also  the  attendance  of  all  wit- 
nesses having  knowledge  of  facts  relevant  to  the  deter- 
mination of  questions  involved  in  this  issue  of  reference ; 
and  that  the  testimony  heretofore  taken  in  this  cause 
shall  be  before  said  Master  so  far  as  relevant  to  this 
reference.  Said  Master  to  report  to  this  Court  his  find- 
ings and  conclusions  thereon. 

Fourth:  That  the  preliminary  injunction  heretofore 
granted,  and  now  in  force,  is  hereby  made  perpetual,  and 
the  complainant  have  and  recover  from  the  defendant 
the  costs  in  this  case  to  be  taxed,  and  have  execution 
therefor. 

R.  A.  Archbald, 

District  Judge. 


United  States  of  America,        | 
Middle  District  of  Pennsylvania. | 


set. 


I,  Edward  R.  W.  Searle,  Clerk  of  the  Circuit  Court  of 
the  United  States  of  America,  for  the  Middle  District  of 
Pennsylvania  in  the  Third  Circuit,  do  hereby  certify  that 


I'      ')' 


92 


NATIONAL   BISrUIT   COMPANY    vs.   WALTER 


the  writings  annexed  to  this  certificate  are  true  copies  of 
their  respective  originals  on  file  and  now  remaining 
among  the  records  of  said  court  in  my  office. 

In  testimony  whereof,  I  have  hereunto  subscribed  my 
name  and  affixed  the  seal  of  tlie  said  Court,  at  Scranton, 
this  31st  day  of  May  in  the  year  of  our  Lord  one  thousand 
nine  hundred  and  four  and  of  the  Independence  of  the 
United  States  the  128. 

E.  W.  R.  Searle, 

Clerk  of  C.  C. 


Oltrrmt  Cflurt  of  t\}t  l^nttth  States 

Western  District  of  New  York 


NATIONAL  BISCUIT  COMPANY 

Complainant, 


^ 


^ 


IRA  SWICK 


DeftntUint. 


IN   EQUITY 


STIPULATION  FOR  INJUNCTION, 
OPINION  AND  DECREE 


MOOT,  SPRAGUE,  BROWNELL  &  MARCY 
OFFIELD,  TOWLE  &  LIXTIIICUM 
EARL  D.  BABST 

For  Complainant. 

BANNING  &  BANNING 
BENJAMIN  C.  STARR 

For  Defendant. 


94 


NATIONAL    IJIS4  riT    rOMI'ANV    rs.    SWK  Iv 


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jc 


NATIONAL  RISniT  COMPANY   vs.   SWKTv 


95 


jSSraSk^^MSSSSv^ 


^^►"•' 


•%a\\at\a\S>v&o»\\.  Co 


FXCELSIOH 

U  BUTTER. 


tdmimm-mmttttm 


^XCELSm 

—    ^       T/ff  OHIO  BAKinC  CO. 


96 


NATIONAL  BISCUIT  COMPANY  vs,  SWICK 


'(W«r|nB.'r^rife'^:^-  »*(  *-&-  «v'  «iBi'  ^t-i  «■*.  laii  *^, 
^^^;^^,5J^jf^*t  ^^^„>«.it_  ,,n.y^  .«SLirs  .i^i*  •*»  ,;«.»  .x*> 


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•»--%'a''Tv'*'^  -  "»^^  iT"  -  •'"'  -  '■"'  * 


I 


NATIONAL  BISCUIT  COMPANY  r«.  SWICK 


97 


Stipulation  for  Injunction. 


Circuit  Court  of  the  United  States,  Western  District 

OF  New  York. 


National  Biscuit  Company, 

Complainant, 
vs, 
Ira  Swick, 

Defendant, 


In  Equity. 


It  is  hereby  stipulated  and  agreed  by  and  between 
the  above  parties,  by  their  counsel,  respectively,  that  an 
injunction  may  be  entered  in  the  above  entitled  cause 
against  the  defendant  enjoining  him  from  using  the 
''Long  Branch  Biscuit  Eibbon-Tying"  design,  the  trade- 
mark or  name  ' '  Zephyrette, ' '  and  the  trade-mark  or  name 
*' Excelsior"  or  *' Excelsior  Butter  Cracker"  as  prayed 
for  in  the  bill  of  complaint  in  the  above  entitled  cause, 
but  without  costs,  profits  or  damages  to  which  the  com- 
plainant might  be  entitled  for  the  past,  the  same  hav- 
ing been  mutually  agreed  upon  and  arranged. 

It  is  further  stipulated  and  agreed  that  the  Ohio  Bak- 
ing Company,  manufacturer  of  the  cartons  and  packages 
sold  by  the  defendant  containing  the  above  mentioned 
trade-marks,  names  or  designs,  shall  cease  and  discon- 
tinue the  use  of  each  of  the  above  trade-marks,  names  or 
designs  on  or  before  the  First  day  of  Januar>%  1902,  and 
in  consideration  thereof  the  complainant  hereby  releases 
and  quit  claims  under  said  agreement  and  arrangement 
the  said  Ohio  Baking  Company  from  any  and  all  claim 


96 


NATIONAL  BISCUIT  COMPANY   cs.  SWlCK 


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^^^;^S^;^^£|^::^CA^-^C^^^^-^^ 


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n-T" 


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mi^ 


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NATIONAL  I?IS(  T  IT  COMTANY    is.   SWK  K 


97 


Stipulation  for  Injunction. 


Circuit  Coukt  of  the  United  States,  Western  District 

OF  New  York. 


National  Biscuit   Company, 

Complainant, 
vs. 
Ira  Swick, 

Defendant. 


In  Eijuity. 


It  is  hereby  stipulated  ami  agreed  by  and  between 
the  above  parties,  by  their  counsel,  respectively,  that  an 
injunction  may  be  entered  in  the  above  entitled  cause 
against  the  defendant  enjoining  him  from  using  the 
*'Long  Branch  Biscuit  Hibbon-Tjdng"  design,  the  trade- 
mark or  name  ^'Zephyrette,"  and  the  trade-mark  or  name 
'* Excelsior"  or  ''Excelsior  Butter  Cracker"  as  prayed 
for  in  the  bill  of  complaint  in  the  above  entitled  cause, 
but  without  costs,  profits  or  damages  to  which  the  com- 
plainant might  be  entitled  for  the  past,  the  same  hav- 
ing been  mutually  agreed  upon  and  arranged. 

It  is  further  stipulated  and  agreed  that  the  Ohio  Bak- 
ing Company,  manufacturer  of  the  cartons  and  packages 
sold  by  the  defendant  containing  the  above  mentioned 
trade-marks,  names  or  designs,  shall  cease  and  discon- 
tinue the  use  of  each  of  the  above  trade-marks,  names  or 
designs  on  or  before  the  First  day  of  January,  1902,  and 
in  consideration  thereof  the  complainant  hereby  releases 
and  quit  claims  under  said  agreement  and  arrangement 
the  said  Ohio  Baking  Company  from  any  and  all  claim 


98 


NATIONAL  BISCUIT  COMPANY  vs.  SWICK 


for  damages  or  profits  which  it  might  have  against  said 
Company  on  account  of  its  use  prior  to  January  1,  1902, 
of  each  of  said  trade-marks,  names  or  designs  whether 
used  on  packages,  sold  to  the  defendant  herein  or  others. 

OfFIELD,  ToWLE  &  LlNTHICUM, 

Solicitors  for  Complainant. 

Banning  &  Banning, 

Solicitors  for  Defendant, 


I 


NATIONAL  BISCUIT  COMPANY  vs.  SWICK 


99 


(United  States  Circuit  Court,  Western  Division  New  York.     March  17, 

1903.) 

No.  134. 

1.  Trade-Marks — Infringement. 

A  technical  trade-mark,  although  not  a  facsimile  of  another,  may 
be  so  used  by  a  rival  manufacturer  as  to  imitate  another's  trade- 
mark, and,  when  such  use  actually  deceives  the  public,  it  consti- 
tutes an  infringement,  against  which  a  court  of  equity  will  grant 
relief. 

2.  Same. 

Complainant  used  and  registered  a  trade-mark  consisting  of  a 
square  label  or  seal  of  a  vivid  red  color,  with  the  corners  clipped, 
on  which  was  an  arbitrary  combination  of  straight  and  curved  lines 
in  white,  in  which  were  printed  the  letters  and  word  "In-er-seal." 
These  labels  were  placed  on  the  ends  of  complainant's  cartons  con- 
taining bakery  products.  Another  manufacturer  of  the  same  class 
of  goods,  registered  as  a  trade-mark,  and  used  in  the  same  manner 
on  its  cartons,  a  label  the  same  in  size,  shape,  and  color,  having 
thereon  a  combination  of  white  lines  consisting  of  circles  and  straight 
lines  with  the  words  "Factory"  and  "Seal"  printed  thereon.  The 
figure  or  symbol  was  not  the  same,  but  the  general  effect  of  the 
combination  in  a  label  used  in  the  same  place  on  a  carton  of  the 
same  size,  shape,  and  color,  together  with  a  similar  figure  and  the 
word  "Seal,"  was  to  simulate  the  trade-mark  of  complainant,  and 
to  deceive  purchasers.  Held,  that  such  use  of  defendant's  trade- 
mark was  an  infringement  of  that  of  complainant,  which  entitled  it 
to  an  injunction. 

In  Equity.  Suit  for  infringement  of  trade-mark.  On 
final  hearing. 

Moot,  Sprague,  Brownell  &  Marcy,  Offield,  Towle  & 
Linthicum,  and  Earl  D.  Babst  (Charles  K.  Offield,  of 
counsel),  for  complainant. 

Banning  &  Banning  and  Benjamin  C.  Starr,  for 

defendant. 

HAZEL,  District  Judge.  The  bill  as  originally  filed, 
charges  the  defendant  with  unlawful  infringement  of  a 
trade-mark  and  five  trade-names  used  by  com- 
plainant upon  its  various  bakery  products.  A 
stipulation  was  filed  before  answ^er,  admitting  in- 
fringement by  defendant  as  to  five  of  the  trade- 
names.    Accordingly    a    decree    was    entered    by    con- 


100 


NATIONAL  BISCUIT  COMPANY  V8,  SWICK 


sent  of  all  parties  restraining  and  enjoining  tlie  future 
use  of  such  trade-names  by  the  defendant.  The  alleged 
infringement  by  the  defendant  of  complainant's  *^In-er- 
seaP'  registered  trade-mark  No.  35,108,  dated  Septem- 
ber 18,  1900,  is  now  the  sole  and  specific  subject  for  judi- 
cial determination. 


COMPLAI N  AXT  's    TrADE-M  ARK. 


\ 


NATIONAL.  BISCUIT   COMPANY  vs.   SWICK 


101 


Defendant's  Trade-mark. 


The  defendant's  infringement  consists  in  the  use  of  the 
registered  trade-mark  No.  35,597,  dated  December  18, 
1900,  issued  to  the  Ohio  Baking  Company. 

The  proofs  show  that  complainant  manufactures  vari- 
ous kinds  of  bakery  products,  which  it  places  upon  the 
market  in  special  and  distinct  sizes  of  cartons  or  packages. 
Such  cartons  and  packages  widely  vary  in  form  and  col- 
oring, and  are  lettered  on  their  sides  in  different  size  tjT)e. 
Upon  the  ends  of  each  package  or  carton  is  applied  the 
trade-mark  printed  upon  a  square  label  or  seal,  clipped 
at  the  corners,  in  clear  white  lines  upon  a  vivid  red  back- 
ground. The  proofs  further  show  that  the  trade-mark 
seal  has  since  its  adoption  regularly  been  applied  to  the 
ends  of  the  cartons  in  the  manner  described,  except  in  a 
few  instances.    Complainant  contends  that  its  product  has 


100 


NAIIONAL   r.  ISC  III"   ('C).MrAXV    r.s.    SWK'K 


sent  of  all  parties  rest  raining  and  enjoining  the  future 
use  of  such  trade-names  bv  the  defendant.  The  alleged 
infringement  bv  the  defendant  of  complainant's  *'ln-er- 
seal"  registered  trade-mark  X-o.  35,108,  dated  Septem- 
ber IS,  11)00,  is  now  the  sole  and  speeitic  subj<'ct  for  judi- 
cial deternnnatioii. 


(  Om  PLAI  N  ax  1  's    ThAI)K-M  AKK. 


NATIONAL  BlSCnX   COMI'ANY    rs.    SWICK 


101 


De  FE N  1  yA  X  T  's   T KA  DE-  M AK  K. 


The  defendant's  infringement  consists  in  the  use  of  the 
registered  trade-mark  No.  :]5,597,  dated  Decend)er  IS, 
1900,  issued  to  the  Ohio  Baking  Company. 

The  proofs  show  that  complainant  manufactures  vari- 
ous kinds  of  bakery  i)roducts,  which  it  places  upon  the 
market  in  special  and  distinct  sizes  of  cartons  or  packages. 
Such  cartons  and  packages  widely  vary  in  form  and  col- 
oring, and  are  lettered  on  their  sides  in  different  size  type. 
T^pon  the  ends  of  each  package  or  carton  is  applied  the 
trade-mark  printed  upon  a  square  label  or  seal,  clipped 
at  the  corners,  in  clear  white  lines  upon  a  vivid  red  liack- 
ground.  The  proofs  further  show  that  the  trade-mark 
seal  has  since  its  adoption  regularly  been  applied  to  the 
ends  of  the  cartons  in  the  manner  descnbed,  oxcept  in  a 
few  instances.    Complainant  contends  that  its  product  has 


f  'I 
f 


I' 


102 


NATIONAL   BISCUIT    COMPANY    vs.    SWICK 


become  well  known  to  the  general  public  because  of  the 
peculiarly  quaint  configuration  of  its  trade-mark,  which 
is  uniquely  displayed.  The  bill  charges  the  adoption  of 
the  trade-mark  on  or  about  the  month  of  March,  1899,  and 
its  subsequent  registration  in  the  office  of  the  Commis- 
sioner of  Patents  May  12,  1900.  It  is  specifically  de- 
scribed as — 

*^An  arbitrarily-selected  design  or  symbol  representing 
an  oval-shaped  figure  separated  centrally  and  horizontally 
in  the  direction  of  its  greatest  length  by  a  bar,  from  which 
there  rises  centrally  and  at  right  angles  thereto  a  perpen- 
dicular bar,  which  near  its  upper  end  is  intersected  by 
double  horizontal  cross-bars,  thus  forming  what  might  be 
designated  as  a  ^double-T-shaped'  figure  or  cross-tree, 
while  with  said  oval-shaped  section  and  above  the  hori- 
zontal dividing-bar  and  to  the  left  of  the  perpendicular 
intersecting  bar  appear  the  letters  *I  N,'  and  on  the  op- 
posite side  of  said  perpendicular  intersecting  bar  appear 
the  letters  ^E  R,'  the  lower  section  of  said  oval-shaped 
figure  having  therein  the  word  *  Seal. '  ' ' 

The  specification  describes  and  the  drawings  show  the 
design  as  applied  upon  a  rectangular  background,  the  cor- 
ners thereof  being  clipped  or  irregular.  The  specification 
states  a  preference  for  the  employment  of  a  bright  red  or 
orange-colored  background  in  connection  with  the  trade- 
mark design  with  the  figures  and  lines  printed  in  white. 
The  specification  further  says  that  the  purpose  and  ob- 
ject of  the  peculiarity  of  the  design  is  to  produce  a  con- 
spicuous effect,  securing  the  greatest  possible  [)rominence. 
The  design  is  usually  printed  on  the  labels  attached  to  the 
ends  of  the  cartons  or  packages  containing  complainant's 
product.  This  arbitrary  and  fanciful  designation  was 
first  appropriated  by  complainant  as  a  trade-mark  for  its 
bakery  product,  and  it  is,  therefore,  entitled  to  protection 
from  infringement.  It  quite  clearly  appears  from  the  evi- 
dence that  complainant's  trade-mark  has  been  extensively 
advertised  at  large  expense  throughout  the  United  States 


I 


NATIONAL   BISCUIT    COMPANY    vs.    SWICK 


103 


and  in  the  locality  where  the  defendant  carries  on  his 
business  of  selling  bakery  products,  and  where  the  alleged 
infringing  trade-mark  is  asserted  to  have  been  fraudu- 
lently used.  The  defendant  is  a  dismissed  employe  of  the 
complainant.  He  w^as  well  acquainted  with  complainant's 
customers  in  the  territory  where  the  alleged  infringements 
were  committed.     Soon  after  his  dismissal  from  com- 
plainant's employ,  he  commenced  to  divert  the  trade  of 
complainant  by  introducing  the  bakery  product  of  a  com- 
petitive manufacturer,  and  finally  simulated  complain- 
ant 's  trade-mark,  as  a  result  of  which  his  sales  increased. 
Defendant's  bakery  product  is  manufactured  by  the  Ohio 
Baking  Company,  and  is  put  upon  the  market  wrapped 
up  in  carton  form,  sealed  at  the  ends,  and  having  a  vivid 
red  rectangular  label  at  each  end,  clipped  at  the  corners. 
Upon  the  seals  or  square  labels  is  imprinted  in  distinctive 
white  lines  the  registered  trade-mark  of  the  Ohio  Baking 
Company,  above  set  forth.     The  labels  upon  which  is 
printed  the  infringing  device  as  to  color,  size,  and  irregu- 
lar shape  are  in  similitude  of  complainant's  labels  or 
seals.    The  configuration  of  the  infringing  trade-mark 
consisting  of  curved  and  straight  lines,  flaring  at  the  ends 
in  resemblance  of  complainant's  lines,  is  more  particularly 
described  in  the  specification  as  consisting  of  three  paral- 
lel vertical  bars  and  central  cross-bar  and  two  circles  ar- 
ranged in  the  manner  show^n  by  the  figure  itself.    Defend- 
ant claims  that  the  Ohio  Company  trade-mark  really  con- 
sists of  a  fanciful  monogram  of  the  w^ord  **Ohio,"  and 
that  he  has  the  right  to  use  it  in  any  size,  shape,  and  color. 
Prominently  appearing  in  defendant's  label  are  the  words 
^*  Factory"  at  the  upper  end  and  **Seal"  at  the  lower  end. 
This  also  would  appear  to  be  in  simulation  of  the  word 
**In-er-seal"  printed  on  complainant's  device.  The  pack- 
ages or  cartons  of  both  complainant  and  defendant  have 


(     ! 


M 


104 


NATIONAL  BISCUIT  COMPANY  V8,  SVVICK 


printed  matter  upon  their  sides,  indicating  tlie  character 
of  their  contents  and  the  name  of  the  manufacturer.  The 
form  of  the  package  and  style  of  type  and  color  of  wrap- 
per are  concededly  the  property  of  the  public,  as,  indeed, 
are  the  labels  clipped  at  the  comers  having  a  bright  red 
background.  No  point  is  made  to  any  similitude  of  car- 
tons, style,  or  color  of  print,  nor  even  of  the  separate 
features  of  complainant's  trade-mark.  The  defendant 
contended  generally  on  argument  that  the  specifically  de- 
fined trade-mark  of  complainant  as  to  its  general  features 
and  characteristics  must  be  interpreted  as  limiting  its 
scope  to  that  which  is  actually  described.  If  this  conten- 
tion means  that  complainant  is  restricted  to  the  use  of 
the  trade-mark,  and  has  obtained  no  exclusive  right  in 
the  collocation  of  its  parts  and  the  distinguishing  features 
by  which  the  trade-mark  has  become  known  to  the  public, 
such  contention  is  without  merit.  The  gist  of  the  com- 
plaint is  a  violation  of  a  trade-mark,  which  is  composed 
of  a  peculiar  configuration  of  lines  and  a  combination  of 
other  features.  In  other  words,  the  distinguishing  char- 
acteristics of  the  trade-mark  consist  in  the  circles  and 
straight  lines  in  relation  to  each  other,  and  printed  upon 
the  label  in  white  and  upon  a  vivid  red  background.  In 
the  case  of  Lalance  &  Grosjean  Mfg.  Co.  v.  National 
Enameling  &  Stamping  Co.  (C.  C),  109  Fed.  317— a  case 
of  unfair  competition — it  was  held  that  no  one  can  have 
a  trade-mark  monopoly  of  any  color  of  paper,  or  any 
shape  of  label,  or  any  color  of  ink,  or  any  one  or  other 
detail,  yet  the  general  collocation  of  such  details  will  be 
protected.  The  sole  question,  therefore,  is  whether  the 
defendant's  design  for  a  trade-mark  imprinted  on  a  vivid 
red  background  in  simulation  of  complainant's  design  is 
fairly  within  complainant's  asserted  exclusive  scope.  That 
complainant's  trade-mark  and  manner  of  displaying  the 


NATIONAL  BISCUIT  COMPANY  vs.   SWICK 


105 


same  attracts  the  public  attention  cannot  be  successfully 
disputed.  Undoubtedly,  complainant 's  manufactured 
product  has  become  extensively  known  to  the  public  solely 
by  its  peculiar  trade-mark.  I  have  no  doubt  that  an  in- 
tending purchaser  of  complainant's  product  using  ordi- 
nary care  is  attracted  to  the  arbitrary  trade-mark  design, 
and  not  to  any  printed  words  on  the  sides  of  the  pack- 
ages, or  even  to  the  nomenclature  of  the  manufacturer  of 
the  product.  When  both  designs  were  exhibited  on  the 
hearing,  I  became  well  satisfied  that  defendant's  device 
and  manner  of  apphing  it  in  combination  with  the  other 
features  are  in  imitation  of  complainant's.  Such  resem- 
blance tends  to  deceive  an  ordinary  purchaser  giving  the 
usual  attention,  and  causes  him  to  purchase  the  one  be- 
lieving it  to  be  the  other.  Although  defendant's  device 
and  configuration  is  not  in  strict  resemblance  to  complain- 
ant's,  yet  force  is  given  to  the  impression  which  I  ob- 
tained on  the  hearing  because  of  the  adoption  by  defend- 
ant of  a  bright  red  background  and  a  label  clipped  at  the 
comers  of  corresponding  size  to  that  of  complainant. 
The  record  discloses  that  the  trade-mark  seal  of  the  de- 
fendant  and  the  manner  of  displaying  it  upon  the  ends 
of  cartons  and  packages  is  likely  to  deceive  the  ordinary 
purchaser  into  the  belief  that  he  was  purchasing  the  prod- 
uct of  complainant.  By  the  testimony  of  defendant's  wit- 
ness Gaiser,  a  grocer,  it  appears  that  an  intending  pur- 
chaser must  make  a  close  examination  of  both  packages 
in  order  to  distinguish  defendant's  packages  and  cartons 
from  complainant 's.  The  witness  was  unable  at  the  hear- 
ing, when  both  packages  were  exhibited  to  him,  to  dis- 
cover much  difference,  and  was  compelled  to  look  for  the 
name  of  the  manufacturer  to  distinguish  the  product  of 
complainant  from  that  of  defendant.  Other  evidence  was 
given  by  complainant  upon  the  hearing  showing  the  sim- 


I 


106 


NATIONAL  BISCUIT  COMPANY  r«.  SWICK 


ilitude  of  the  respective  trade-marks  to  be  such  as  to  de- 
ceive the  public  into  buying  the  bakery  product  of  defend- 
ant under  the  impression  that  they  are  buying  those  of 
complainant.     Irrespective,  however,  of  such  proof,  the 
trade-mark  imprinted  upon  a  bright  red-colored  label, 
clipped  at  the  corners,  and  of  corresponding  size  to  com- 
plainant's  is  alone  calculated  to  deceive,  and  must  be  re- 
garded   as    an    infringement    of    complainant's    rights 
secured  by  its  registered  trade-mark.    Specific  proof  of 
purchases  by  individuals  actually  deceived  under  such  cir- 
cumstances appears  not  to  be  necessarv.    Cleveland  Stone 
Co.  V,  Wallace  (C.  C),  52  Fed.  431;  National  Biscuit  Co 
V.  Baker  (C.  C),  95  Fed.  135;    Von  Mumm,  v.  Frash 
(C.  C),  56  Fed.  830.    In  the  controversy  it  is  immaterial 
that  the  size  of  cartons,  color  of  wrapper,  size  and  kind 
of  label,  and  separate  features  of  complainant's  trade- 
mark are  old,  and  may,  therefore,  be  used  by  any  one. 
The  complainant's  trade-mark,  its  features  of  coloring, 
rectangular  labels,  white  lines  on  a  vivid  background', 
manner  of  displaying  the  arbitrary  designation  at  the 
ends  of  the  packages,  all  in  combination,  are  peculiarly 
distinguishing  marks  for  its  goods.     I  am  well  satisfied 
that  a  technical  trade-mark,  although  not  a  fac-simile  of 
another,  may,  nevertheless,  be  so  used  by  a  rival  manu- 
facturer as  to  imitate  another's  trade-mark,  and  when 
such  use  actually  deceives  the  public  a  court  of  equity  will 
afford  relief.  Scheuer  v.  Muller,  20  C.  C.  A.  161,  74  Fed 
225;  Draper  v,  Skerrett  (C.  C),  94  Fed.  912.    I  have  ex- 
amined the  case  of  Richter  v.  Anchor  Eemedy  Co.  (C.  C), 
52  Fed.  455,  and  other  cases  cited  by  counsel,  but  such 
cases  are  either  not  in  point  or  do  not  disturl)  the  conclu- 
sion reached.    By  the  manner  of  defendant's  use  of  the 
Ohio  Baking  Company's  trade-mark  he  obtains  a  benefit 
to  which  he  is  not  entitled.    He  appropriates  the  good  will 


NATIONAL  BISCUIT  COMPANY  vs,  SWICK 


107 


of  a  rival  business  by  purloining  his  rival's  method  of 
dressing  his  vendible  goods.  City  of  Carlsbad  v.  Schultz 
(C.  C),  78  Fed.  471;  Sprague  Elec.  Ry.  &  Motor  Co.  v. 
Nassau  Elec.  Ry.  Co.,  37  C.  C.  A.  286,  95  Fed.  821.  As 
Judge  Wanty  said  when  the  case  against  the  Ohio  Baking 
Company  was  before  him  on  application  for  preliminary 
injunction,  ^  *  Why  does  the  defendant  use  the  exact  shade 
of  red  used  by  complainant?"  Further  inquiry  is  perti- 
nent. Why  white  letters  of  substantially  the  same  type ! 
Why  labels  of  uniform  size,  and  with  clipped  corners! 
Other  questions  of  like  kind  may  be  propounded.  The 
record  discloses  no  satisfactory  answer,  and  therefore  it 
is  manifest  that  the  defendant  deliberately  and  fraudu- 
lently imitates  the  trade-mark  of  complainant,  and  in  that 
manner  designs  to  palm  off  his  goods  for  those  of  com- 
plainant. 

The  complainant  may  have  a  decree,  with  costs,  enjoin- 
ing the  defendant  from  imitating  or  simulating  complain- 
ant's  *^In-er-seal"  trade-mark,  as  set  out  in  this  opinion. 
So  ordered. 

121  Fed.  Rep.  1007. 


108 


I. , 

■I  ■ 


NATIONAL  BISCUIT  COMPANY   vs.  SWICK 


FINAL  DECKEE. 


United  States  Circuit  Court, 
Western  District  of  New  York. 

National  Biscuit  Company, 

Complainant, 
vs. 
Ira  Swick, 

Defendant. 


Bill  for  Infringement 

of  Trade-mark. 
Decree. 


This  cause  coming  on  to  be  heard  upon  pleadings  and 
full  proof,  and  having  been  fully  argued  by  counsel  re- 
spectively, for  both  parties  litigant:  Mr.  Charles  K. 
Offield,  Mr.  Adelbert  Moot,  and  Mr.  Earl  D.  Babst,  for 
complainant;  Messrs.  Banning  &  Banning,  and  Mr. 
Benjamin  C.  Starr,  for  defendant;  and  the  court  being 
fully  advised,  and  having  duly  considered  the  same, 
orders,  adjudges  and  decrees: 

First :  That  the  said  complainant,  the  National  Biscuit 
Company's  In-er-seal  Trade-mark  is  a  good  and  valid 
Trade-mark,  and  the  complainant  has  full  and  unques- 
tioned title  thereto  and  therein,  as  alleged  in  the  bill  of 
complaint  filed  herein. 

Second:  That  the  said  defendant,  Ira  Swick,  has  in- 
fringed upon  and  violated  said  complainant's  In-er-seal 
trade-mark,  as  alleged  in  said  bill  of  complaint. 

Third:  That  the  said  defendant,  his  agents,  servants, 
attorneys,  and  employes  be,  and  hereby  are  enjoined  from 
applying  or  using  complainant's  In-er-seal  trade-mark  in 
any  manner  whatsoever,  upon,  or  in  connection  with, 
bakery  products ;  or  in  any  manner  whatsoever,  handling, 
selling,  or  advertising  bakery  products,  or  packages,  or 
cartons  containing  bakery  products  having  thereon  com- 
plainant's said  trade-mark,  or  any  imitation  or  simulation 
thereof. 


NATIONAL  BISCUIT  COMPANY  va.  SWICK 


109 


Fourth :  That  the  said  complainant  has  the  right  to  re- 
cover any  and  all  damages  accruing  to,  or  arising  out  of 
said  unlawful  violation  and  infringement  of  said  trade- 
mark by  said  defendant,  together  with  the  cost  herein  to 
be  taxed;  and  that  this  cause  be  referred  to  George  P. 
Keating,  he  being  a  suitable  person  as  Master  of  this 
Court,  to  take,  state  and  report  an  account  of  such  dam- 
ages under  and  in  accordance  with  this  decree,  and  that 
upon  said  accounting  the  testimony  heretofore  taken  by 
either  party  in  this  cause  may  be  read  by  either  party, 
and  considered  by  the  Master. 

John  K.  Hazel, 

U,  S.  J. 

Endorsed:  U.  S.  Circuit  Court,  Western  District  of 
New  York.  In  Equity.  National  Biscuit  Company  vs. 
Ira  Swick.  Decree.  U.  S.  Circuit  Court,  Western  Dist. 
of  N.  Y.    Filed  Mar.  28, 1903.    Harris  S.  Williams,  Clerk. 


United  States  of  America,      | 
Western  District  of  New  York.) 


ss. 


I,  Harris  S.  Williams,  Clerk  of  the  Circuit  Court  of  the 
United  States,  for  the  Western  District  of  New  York,  do 
hereby  certify  that  I  have  compared  the  annexed  copy  of 
Decree  with  the  original  entered  and  on  file  in  this  office, 


110 


NATIONAL  BISCUIT  COMPANY  vs.   SWICK 


and  that  the  same  is  a  correct  transcript  therefrom,  and 
ot  the  whole  of  said  original. 

And  I  further  certify  that  I  am  the  officer  in  whose 
custody  it  is  required  by  law  to  be. 

In  testimony  whereof,  I  have  caused  tlie  seal  of  the 
said  Court  to  be  affixed  at  the  City  of  Buffalo,  in  said 
District,  this  6th  day  of  April,  A.  D.  1903. 

Harris  S.  VV^illiams, 

Clerk. 


Ctrrmt  CHourt  of  th?  Ittttf  5  BMtB 


Southern  District  of  New  York 


NATIONAL  BISCUIT  COMPANY 
a  corporation 


Complainant, 


vs. 


HENRY  PUNCHARD,  Sr.,  and  HENRY 
PUNCHARD,  Jr.,  co^partners,  doing 
business    as    HENRY     PUNCHARD     & 

SON, 

Defendants. 


IN  EQUITY 


ii 


DECREE  AND  INJUNCTION 


EDMUND  WETMORE 
CHARLES  K.  OFFIELD 
EARL  D.  BABST 

For  Complainant. 

JOHN  A.  MAPES 

For  Defendants. 


XATIONAI.   BLSn  IT   rOMTANY 


vs.   1*UNCHARI> 


113 


114 


NATIONAL  BISCUIT  COMl'ANY   vs.   PUNCHAHD 


NATIONAL  BLSCLIT  COMPANY    cs.   PUNCHAKD 


115 


PINAL  DECREE. 

United  States  Circuit  Court, 
Southern  District  of  New  York. 

National  Biscuit  Company,  a  cor- 
poration, 

Complainant, 
vs. 
Henry  Punchard,  Sr.,  and  Henry  ^ 
Punchard,  Jr.,  co-partners,  do- 
ing business   as   Henry  Pun- 
chard &  Son. 

Defendants. 

This  cause  coming  on  to  be  heard  under  the  pleadings 
as  filed,  and  Mr.  Edmund  Wetmore,  Mr.  Earl  D.  Babst 
and  Mr.  Charles  K.  Offield,  appearing  in  behalf  of  the 
complainant,  and  Mr.  John  A.  Mapes  in  behalf  of  the 
defendants,  and  it  appearing  to  the  Court  that  the  said 
defendants  do  not  desire  to  further  contest  this  action, 
but  have  made  a  certain  settlement  of  the  same  and  as- 
sented as  follows : 

(1)  That  the  said  complainant  is  the  rightful  and  ex- 
elusive  owner  of  the  trade-name  '^Uneeda"  or  ''Uneeda 
Biscuit"  as  alleged  in  said  bill  of  complaint,  and  is  the 
rightful  and  exclusive  owner  of  the  trade-mark  ''In-er- 
seal",  consisting  of  a  vivid  red  background,  square  in 
shape  with  uniform  clipped  corners  having  white  line 
markings  thereon  and  applied  to  each  end  of  the  bakery 
cartons  or  packages  with  a  marginal  exposure  surround- 
ing the  same,  and  is  the  rightful  and  exclusive  owner  of 
the  wrapper  application,  word  collocation  and  decorative 
appearance  of  the  wrapper  surrounding  and  enclosing 
said  carton  or  package,  as  appears  by  complainant's  ex- 
hibits filed  herewith. 

(2)  That  the  said  defendants,  Henry  Punchard,  Sr.,, 


1 


lU 


.\A1!'»\a:      l:iS(iri     CMMi'.W^      ■<.    ITNCHAUI* 


XATloXAl,   I'.ix   I   IT  .  oMi'.vw       -.    ri\(  llAlrH 


1 1 5 


i 


I 

r 


FTXAL  DErRKK. 

UxiTED  Sta  TES  ClH(  riT  CoT'KT, 

Sontlirn-ii  District  of  X(nv  York. 

XatioMril  Flisf-nit  (VnnpHiiy,  a  tm^v- 
pc>ratioii, 

Comphi'numt , 

iffnry  Punchard,  Sr.,  an.l  IFonrv 
Piuic'hard,  *]\\,  r-o-partnors,  <lo- 
irior  business  as  FH^nry  Piiii- 
cliard  k  Son. 

This  cansp  comino-  on  to  b<*  li(^ar<l  mi(l(»r  tlic  plfadincrs 
as  filed,  an«l  Mr.  pjhniind  \V«4ni(n-p,  Mr.  Karl  D.  I^al»t 
and  Mr.  Charles  K.  Offield,  appearing-  in  belialf  ot  the 
eoniplainant,  and  Mr.  John  A.  Mapes  in  belialf  of  the 
defendants,  and  it  appearing-  to  the  Conrt  tliat  the  ^aid 
defendants  .lo  not  desire  to  further  contest  tliis  action, 
but  have  made  a  certain  settlement  of  tin-  same  and  a.— 
sented  as  follows  : 

(1)  That  the  said  complainant,  is  the  I'iditful  and  <*x- 
clusive  owner  of  the  trade-nann^  "Tneeda"  or  ••Une<Mla 
Biscuit"  as  alleged  in  said  bill  of  com])laint,  and  is  the 
rio:htful  and  exclusive  owner  of  the  trade-mark  Mn-^'r- 
seal",  consistitiiT  of  a  vivid  rntl  backuround,  spian'  in 
shape  with  unifortu  clipped  corners  havin<i-  wliito  line 
markings  thereon  and  applied  to  eacli  <Mid  of  the  i)akerv 
cartons  or  [jackages  with  a  njar.uinal  i^xpo^uie  -ui?onrul- 
in^•  the  same,  and  is  the  ri.i>htful  and  exclusive  .axucj-  of 
the  wrapiH'r  application,  word  collocation  and  decoraliv  e 
ap[>earance  of  the  wrapper  surronndiiio-  .ind  .m  lovinir 
said  carton  or  packa.<>e,  as  appears  by  complainani  s  .ex- 
hibits tiled  herewith. 

(2)  That   the   ^aid  <lel'endants,    Henjy    Punehard,   S]-., 


116 


NATIONAL  BISCUIT  COMPANY  vs.  PUNCHARD 


and  Henry  Puncbard,  Jr.,  have  infringed  and  violated 
these  exclusive  rights,  trade-name,  trade-mark  and  wrap- 
per embellishment  by  the  use  upon  such  cartons  of  the 
words  ''Ulika  Biscuit,"  as  appears  upon  the  sides  of  de- 
fendants' cartons,  and  of  the  bright  red  seal  upon  the 
ends  thereof  with  white  line  accompanying  markings 
thereon  and  by  the  wrapper  simulation  of  complainants, 
as  appears  by  *' Complainant 's  Exhibit  Defendants'  In- 
fringing Carton"  filed  herein. 

(3)  That  the  Manhattan  Biscuit  Company,  a  corpora- 
tion  organized  under  the  laws  of  the  State  of  New  Jersey, 
etc.,  puts  up,  makes  and  sells  the  infringing  cartons  with 
the  wrapper  accompaniment  as  disclosed  by  the  defend- 
ants' carton,  and  instigated  and  authorized  th^  commit- 
ment of  the  infringing  acts  above  found. 

(4)  That  the  defendants  having  settled  for  the  dam- 
ages and  profits  suffered  by  the  complainant  and  accru- 
ing to  the  defendants  by  reason  of  these  infringing  acts, 
no  reference  to  a  master  for  an  accounting  is  made,  but 
it  is — • 

Ordered,  adjudged  and  decreed  that  a  perpetual  in- 
junction issue  as  prayed  for  in  the  bill  of  complaint  in 
the  manner  and  to  the  extent  demanded  in  the  fourth 
subdivision  of  the  prayer  for  relief  contained  in  the  com- 
plainant's bill  of  complaint  and  that  the  dc^fendants  pay 
the  taxable  court  costs  in  this  action  and  in  default  there- 
of that  execution  issue  therefor. 

Dated  New  York,  November  3,  1904. 

E.  Henry  Lacombe, 
U.  8.  Circuit  Judge, 

I  hereby  consent  to  the  entry  of  the  above  decree. 

John  A.  Mapes, 
Defendants '  Solicitor, 


NATIONAL  BISCUIT  COMPANY  vs.  PUNCHARD 


117 


We  hereby  consent  to  the  entry  of  the  above  decree. 

Earl  D.  Babst, 

OfFIELD,  ToWLE  &  LiNTHICUM, 

Complainant's  Solicitors, 
Edmund  Wetmore, 

Charles  K.  Offield, 

Earl  D.  Babst, 

Of  Counsel, 

(Endorsed)  United  States  Circuit  Court,  Southern 
District  of  New  York.  National  Biscuit  Co.,  Complain- 
ant, vs.  Henry  Punchard,  S'r.,  et  al.,  Defendants.  Final 
DECREE.  Earl  D.  Babst  &  Offield,  Towle  k  Linthicura, 
Solrs.  for  Complt.,  34  Pine  St.,  New  York.  IJ.  S.  Circuit 
Court,  Southern  District  of  New  York,  Filed  Nov.  3, 
1904,  John  A.  Shields,  Clerk. 


A  copy. 

John  A.  Shields, 

Clerk. 


118 


NATIONAL   BISCUIT   COMPANY   VS.   PUNCHARD 


INJUNCTION. 


THE  PRESIDENT  OF  THE  UNITED  STATES  OF 

AMERICA, 

To  Henry  Punchardy  Sr.,  and  Henry  Piinchard,  Jr., 
their  clerks,  attorneys,  servantiS,  agents  and  ivorkmen, 
and  each  and  every  of  them,  Greeting: 

Whereas,  it  lias  been  represented  to  us  in  our  Circuit 
Court  of  the  United  States  for  the  Second  Circuit  and 
Southern  District  of  New  York,  that  the  complainant. 
National  Biscuit  Company,  is  the  rightful  and  exclusive 
owner  of  the  trade-mark  **Uneeda"  or  *^Uneeda  Bis- 
cuit,'' as  alleged  in  the  bill  of  complaint  herein,  and  is 
the  rightful  and  exclusive  owner  of  the  trade-mark  **In- 
er-seal,"  consisting  of  a  vivid  red  background  square  in 
shape  with  uniform  clipped  corners  having  white  line 
markings  thereon  and  applied  to  each  end  of  the  bakery 
cartons  or  packages,  with  a  marginal  exposure  surround- 
ing the  same,  and  is  the  rightful  and  exclusive  owner  of 
the  wrapper  application,  word  collocation  and  decorative 
appearance  of  the  wrapper  surrounding  and  enclosing 
said  carton  or  package,  as  appears  by  complainant's  ex- 
hibits filed  with  said  bill  of  complaint,  and  that  the  said 
defendants,  Henry  Punchard,  Sr.,  and  Henry  Punchard, 
Jr.,  have  infringed  and  violated  these  exclusive  rights, 
trade-name,  trade-mark  and  wrapper  embellishment  by 
the  use  upon  such  cartons  of  the  words  *^Ulika  Biscuit," 
as  appears  upon  the  sides  of  defendants'  cartons,  and 
of  the  bright  red  seal  upon  the  ends  thereof  with  while 
line  accompanying  markings  thereon,  and  by  the  wrapper 
simulation  of  complainant; 

Now,  THEREFORE,  wc  strictly  command  and  enjoin  you, 
the  said  Henry  Punchard,  Sr.,  and  Henry  Punchard,  Jr., 


>ATIOXAL   BISCUIT   rOMPAXY    vs.    PUNCHARD 


119 


and  each  of  you,  your  servants,  agents  and  employes, 
and  all  claiming  or  holding  through  or  under  you,  un- 
der the  penalties  that  may  fall  upon  you  in  case  of  dis- 
obedience that  you  forthwith  permanently  and  forever 
desist  from  in  any  manner  whatsoever  handling,  adver- 
tising or  selling  the  packages  heretofore  sold  by 
defendants,  complained  of  in  the  bill  of  complaint  and 
hereinabove  described,  or  making  use  of  the  word 
*'Ulika"  or  **Ulika  Bis-kit,"  or  any  word  substantially 
like  it  or  them,  as  the  name  or  designation,  or  as  a  part 
of  the  name  or  designation  connected  with  any  biscuit 
upon  any  package  used  in  the  sale  of  biscuits,  and  from 
in  any  manner  whatsoever  making  use  of  the  word  or 
words  ^^Ulika'^  or  ^^Ulika  Bis-kit,"  or  any  other  word 
substantially  like  it  as  the  name  or  designation,  or  part 
of  the  name  or  designation  upon  any  wrapper  on  any 
package  of  biscuits  or  crackers  whatsoever ;  or  from  the 
use  of  said  word  or  name  upon  any  package  or  packages 
like  those  hereinabove  described  as  the  packages  or  car- 
tons of  said  defendants,  and  in  every  way  from  making 
use  in  connection  with  the  sale  or  advertisement  of  bis- 
cuit the  words  **Ulika"  or  ^^Ulika  Bis-kit"  upon  any 
packages  so  nearly  like  your  orator's  package  hereinbe- 
fore described  as  to  be  calculated  to  mislead,  or  from  in 
any  way  using  upon  the  ends  of  such  packages  or  cartons 
a  label  or  seal  of  red  background  with  white  line  mark- 
ings thereon,  as  shown  upon  the  ends  of  defendants' 
packages  herein  complained  of,  or  from  advertising  by 
picture  representations  your  orator's  said  trade-names 
or  trade-mark  and  wrapper  ornamentation,  as  appears 
in  ** Complainant's  Exhibit  Defendants'  Advertisement 
No.  1,"  and  ** Complainant's  Exhibit  Defendants'  Poster 
Infringement  No.  2,"  and  from  violating  and  infringing 
the  rights  of  your  orator  in  the  premises  as  hereinbefore 
set  forth. 


120 


NATIONAL  BISCUIT  COMPANY  vs.   PUNCHARI) 


Witness  the  Hon.  Melville  W.  Fuller,  Chief  Justice  of 
the  United  States  at  the  City  of  New  York,  Borough  of 
Manhattan,  on  the  5tli  day  of  November,  1904. 

John  A.  Shields, 

Clerk, 


A  copy. 

John  A.  Shields, 

Clerk. 


(Hxxmt  Olowrt  nf  %  Inttei  ^tat^a 


District  of  Maryland 


NATIONAL  BISCUIT  COMPANY^  .      ^ 

Complainant, 

HARGRAVE  BISCUIT  COMPANY, 
JOSEPH  W.  HARGRAVE,  WILLIAM 
B.  HARGRAVE,  EPPS  HARGRAVE, 
STEVEN  J.  VAN  LILL  and  JAMES  W. 

CHAPMAN,  Jr., 

Defendants. 


IN  EQUITY 


FINAL  DECREE  AND  INJUNCTION 


OFFIELD,  TOW^LE  &  LINTHICUM 

Solicitors  for  Complainant. 

W.  IRVINE  CROSS 
EARL  D.  BABST 

Of  Counsel  for  Complainant. 

GEORGE  D.  PENNIMAN 
JAMES  V^.  CHAPMAN,  Jr. 

Solicitors  for  Defendants. 


1     ,!] 


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HARGRAVt  ] 
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124       NATIONAL  BISCUIT  COMPANY  V8.  HARGRAVE  BISCUIT  COMPANY 


J! 


NATIONAL  BISCUIT  COMPANY  vs,  HARGRAVE  BISCUIT  COMPANY      125 


FINAL  DECREE. 

United  States  Circuit  Court, 

District  of  Maryland. 


National  Biscuit  Company, 

Complainant, 
vs, 
Hargrave  Biscuit  Company, 
Joseph  W.  Hargrave,  William 
B.  Hargrave,  Epps  Hargrave, 
Steven  J.  Van  Lill  and  James 
W.  Chapman,  Jr., 

Defendants, 


> 


Bill  for  infringement 
of  trade-mark,  trade- 
name and  unfair 
competition. 


This  cause  coming  on  to  be  heard  upon  the  pleadings 
as  filed,  Mr.  W.  Irvine  Cross,  Earl  D.  Babst  and  Charles 
K.  Offield  appearing  in  behalf  of  the  complainant,  and 
Mr.  George  D.  Penniman  and  James  W.  Chapman,  Jr., 
in  behalf  of  defendants. 

And  it  appearing  to  the  Court  that  said  defendants 
do  not  desire  further  to  contest  or  defend  this  action,  and 
that  said  defendants  have  tendered  and  paid  the  costs  to 
date  in  this  action  as  taxed  by  the  Clerk,  and  have  also 
made  settlement  and  paid  damages  and  profits  due  the 
complainant  by  reason  of  the  infringing  acts  set  fortb  in 
the  Bill  of  Complaint,  and  that  no  remaining  question  is 
open  and  present  except  the  matter  relating  to  the  grant- 
ing of  an  injunction. 

It  is  therefore,  this  19th  day  of  October,  1905,  ordered, 
adjudged  and  decreed  that  an  injunction  issue  under  and 
in  accordance  with  the  allegations  of  the  Bill  of  Com- 
plaint and  as  identified  by  the  prayer  thereof,  and  that 
this  decree  and  order  be  and  is  final. 

Thos.  J.  MORBIS, 

Judge. 


Ill 


124       NATIONAL  BISCUIT  COMPANY  vs.  HARGRAVE  BISCUIT  COMPANY 


NATIONAL  BISCUIT  COMPANY  vs.  HARGRAVE  BISCUIT  COMPANY      125 


FINAL  DECBEE. 

United  States  Circuit  Court, 

District  of  Marvlaiid. 


National  Biscuit  Company, 

Complainant, 
vs. 
Hargrave  Biscuit  Company, 
Joseph  W.  Hargrave,  William 
B.  Hargrave,  Epps  Hargrave, 
Steven  J.  Van  Lill  and  James 
W.  Chapman,  Jr., 

Defendants, 


> 


J 


Bill  for  'infrin(]enu'nt 
of  trade-mark,  trade- 
name and  unfair 
competition. 


This  cause  coming  on  to  be  heard  upon  the  pleadings 
as  filed,  Mr.  W.  Irvine  Cross,  Earl  D.  Babst  and  Charles 
K.  Offield  appearing  in  behalf  of  the  complainant,  and 
Mr.  George  D.  Penniman  and  James  \V.  Chapman,  Jr., 
in  behalf  of  defendants. 

And  it  appearing  to  the  Court  that  said  defendants 
do  not  desire  further  to  contest  or  defend  this  action,  and 
that  said  defendants  have  tendered  and  paid  the  costs  to 
date  in  this  action  as  taxed  by  the  Clerk,  and  have  also 
made  settlement  and  paid  damages  and  profits  due  the 
complainant  by  reason  of  the  infringing  acts  set  forth  in 
the  Bill  of  Complaint,  and  that  no  remaining  question  is 
open  and  present  except  the  matter  relating  to  the  grant- 
ing of  an  injunction. 

It  is  therefore,  this  19th  day  of  October,  1905,  ordered, 
adjudged  and  decreed  that  an  injunction  issue  under  and 
in  accordance  with  the  allegations  of  the  Bill  of  Com- 
plaint and  as  identified  by  the  prayer  thereof,  and  that 
this  decree  and  order  be  and  is  final. 

Thos.  J.  Morris, 

Judfje. 


126      NATIONAL  BISCUIT  COMPANY  vs.  IIARGRAVE  BISCIIT  COMPANY 


United  States  of  America, 

District  of  Maryland,  to- wit: 

I,  James  W.  Chew,  Clerk  of  the  United  States  Circuit 
Court  for  the  District  of  Maryland,  do  hereby  certify 
that  the  foregoing  is  a  true  copy  of  the  Original  Decree 
entered  and  filed  in  the  therein  entitled  cas(»  in  said  Cir- 
cuit Court,  on  the  19th  day  of  October,  1905. 

In  testimony  whereof,  I  hereunto  set  my  hand 
and  affix  the  seal  of  the  said  Circuit  Court  this  31st  day 
of  October,  1905. 

Jas.  W.  Chew, 
Cleric  of  said  Circuit  Court. 


NATIONAL  BISCUIT  COMI'ANY  vs.  HAKGKAVE  BISCUIT  COMi'ANY      127 


INJUNCTION. 

Circuit  Court  of  the  United  States  of  America,) 

District  of  Maryland.  \  ^^' 

THE  UNITED  STATES  OF  AMERICA, 

To  Hargrave  Biscuit  Company,  Joseph  W,  Hargrave, 
William  B.  Hargrave,  Epps  Hargrave,  Steven  J,  Van  Lill 
and  James  TF.  Chapman,  Jr.,  and  to  your  counselors,  at- 
torneys, solicitors,  trustees,  agents,  clerks,  employees, 
servants  and  workmen,  and  to  each  and  every  one  of  you, 
Greeting: 

Whereas,  it  has  been  represented  to  the  Judges  of  our 
Circuit  Court  of  the  United  States  for  the  District  of 
Maryland  in  Chancery  sitting,  on  the  part  of  the  National 
Biscuit  Copipany,  complainant,  in  a  certain  Bill  of  Com- 
plaint, exhibited  in  our  said  Circuit  Court,  on  the  Chan- 
cery side  thereof,  before  the  Judges  of  said  Court,  against 
you,  the  said  Hargrave  Biscuit  Company,  Joseph  W. 
Hargrave,  William  B.  Hargrave,  Epps  Hargrave,  Steven 
J.  Van  Lill  and  James  W.  Chapman,  Jr.,  to  be  relieved 
touching  the  matters  complained  of.  In  which  said  bill 
it  is  stated,  among  other  things,  that  you  are  combining 
and  confederating  with  others  to  injure  the  complain- 
ant touching  the  matters  set  forth  in  said  bill,  and  that 
your  actings  and  doings  in  the  premises  are  contrary 
to  equity  and  good  conscience. 

^  And  it  being  ordered  that  a  writ  of  perpetual  injunc- 
tion issue  out  of  said  Court,  upon  said  bill,  enjoining  and 
restraining  you,  and  each  of  you,  as  prayed  for  in  said 
bill;  We,  therefore,  in  consideration  thereof,  and  of  the 
particular  matters  in  said  bill  set  forth,  do  strictly  com- 
mand you,  the  said  Hargrave  Biscuit  Company,  Joseph 
W.  Hargrave,  William  B.  Hargrave,  Epps  Hargrave, 


W 


M 


J  ' 


128       NATIONAL  BISCUIT  COMPANY  vs.  HARGRAVE  BISCUIT  COMPANY 

Steven  J.  Van  Lill  and  James  W.  Chapman,  Jr.,  your 
counselors,  attorneys,  solicitors,  trustees,  agents,  clerks, 
employes,  servants  and  workmen,  and  each  and  every  of 
you,  that  you 

Do  Absolutely  Desist  and  Eefrain  from,  in  any  man- 
ner whatsoever  handling,  advertising  or  selling  packages 
or  cartons  containing  bakery  products  having  upon  the 
ends  thereof  any  red  seal  with  white  line  markings  there- 
on, or  red  seal  substantially  like  the  Seal  or  Trade-Mark 
of  your  orator;  or  from  making,  using,  selling  or  han- 
dling cartons  like  your  orator's  carton  containing  your 
orator's  Trade-Name  **Uneeida  Biscuit"  with  wrapper 
accompaniment  as  shown  in  your  orator's  exhibit  of  the 
same,  of  the  use  of  the  word  ** Biscuit"  upon  a  white 
parallelogram,  as  shown  in  * ^  Complainant 's  Exhibit  De- 
fendants' Infringing  Carton,"  whether  preceded  by  the 
words  ^^Eta  Hargrave  Biscuit"  or  any  other  words  as- 
sociated therewith,  or  from  the  use  of  any  wrapper  ap- 
plication similar  to  or  substantially  like  th(?  wrapper  aj)- 
plication  upon  your  orator's  **Uneej3a  Biscuit"  package; 
and  from  violating  and  infringing  the  rights  of  your 
orator  in  the  premises,  until  this  Honorable  Court,  in 
Chancery  sitting,  shall  make  other  order  to  the  contrary. 
Hereof  fail  not,  under  the  penalty  of  what  the  law  di- 
rects. 

Witness,  the  Hon.  Melville  W.  Fuller,  Chief  Justice  of 
the  United  States  of  America,  at  Baltimore,  in  said  Dis- 
trict, this  19th  day  of  October,  in  the  year  of  our  Lord, 
one  thousand  nine  hundred  and  five  and  of  our  Inde- 
pendence, the  one  hundred  and  thirtieth  year. 

James  W.  Chew,  Clerk. 


NATIONAL  BISCUIT  COMPANY  vs.  HAKGRAVE  BISCUIT  COMPANY       129 


United  States  of  America, 

DiSTKICT  OF   MaEYLAND. 


To-Wit : 


I,  James  W.  Chew,  Clerk  of  the  United  States  Circuit 
Court  for  the  District  of  Maryland,  do  hereby  certify 
that  the  foregoing  is  a  true  copy  of  the  Perpetual  In- 
junction which  was  issued  out  of  said  Court  in  the  case 
entitled  National  Biscuit  Company  vs.  Hargrave  Biscuit 
Company,  et  al,  in  said  Circuit  Court  on  the  19th  day  of 
October,   1905. 

In  Testimony  Whereof,  I  hereunto  set  my  hand  and 
affix  the  seal  of  said  Circuit  Court  this  31st  day  of  Octo- 
ber, 1905. 

Jas.  W.  Chew, 
Clerk  of  said  Circuit  Court. 


I  ■ 


11 


Qltrnttt  (Htmrt  nf  %  IntteJi  BUtts 


Eastern  District  of  Michigan 


NATIONAL  BISCUIT  COMPANY 

Complainant, 
t'«. 

HAMMELL  CRACKER  COMPANY,  and 
JAMES  F.  HAMMELL,  SAMUEL 
DUMPHY  and  P.  J.    HAMMELL, 

Defendants. 


IN  EQUITY 
No.  3898 


DECREE  AND  TNJUXCTION 


CHARLES  K.  OFFIELD 
EARL  D.  BABST 

Solicitors  for  Complainant. 

THOMAS,  CUMMINS  &  NICHOLS 

Solicitors  for  Defendants. 


132  NATIONAL    BISCUIT    COMPANY    vs.    HAMMELL    CRACKER  COMPANT 


.( 


NATIONAL  BISCUIT  COMPANY  V8,  HAMMELL  CRACKER  COMPANY     133 


FINAL  DECREE. 

At  a  session  of  the  Circuit  Court  of  the  United  States 
for  the  Eastern  District  of  Michigan,  continued  and  held 
pursuant  to  adjournment,  at  the  District  Court  Room,  in 
the  City  of  Detroit,  on  Friday  the  thirteenth  day  of  Octo- 
ber, in  the  year  one  thousand  nine  hundred  and  five. 

Present:  The  Honorable  Henry  H.  Swan,  District 
Judge. 


No.  3898. 
In  Equity. 


National  Biscuit  Company, 

vs. 
Hammell  Cracker  Company,  and 
James    F.    Hammell,    Samuel 
Dumphy  and  P.  J.  Hammell. 

This  day  came  the  above  named  complainant,  the  Na- 
tional Biscuit  Company,  by  Mr.  Earl  D.  Babst  and 
Charles  K.  Offield,  its  Solicitors  and  of  Counsel,  and  the 
defendants  by  Messrs.  Thomas,  Cummins  &  Nichols,  their 
Solicitors  and  of  Counsel,  and  it  appearing  to  the  Court 
that  the  defendants  do  not  further  desire  to  contest  this 
action,  and  that  they  have  settled  with  and  paid  to  the 
complainant  the  damages,  profits  and  costs  arising  out 
of  this  action  and  the  acts  complained  of  in  the  Bill  of 
Complaint,  and  that  there  nothing  remains  as  to  this  liti- 
gation, except  as  to  the  subject  matter  of  injunction,  and 
the  entry  of  final  decree  so  expressed  herein,  the  defend- 
ant consenting  thereto. 

Now,  THEREFORE,  IT  IS  ORDERED,  ADJUDGED  AND  DECREED  I 

First:  That  the  complainant  is  the  true,  rightful  origi- 
nator and  sole  owner  of  a  certain  trade-mark,  or  symbol, 
consisting  of  a  red  end  seal  upon  the  ends  of  cartons  or 
packages,  containing  bakery  products,  having  a  red  back- 
ground and  white  line  markings  thereon ; 


i 


132  NATIONAL     liLSCin     COMl'ANV    ....    IIAMMKLL    CUA(MvBU  COMrANlT 


NATIONAL  BLSCUIT  COMl'ANY  r.s.  IIAMMKLL  CKACKLU  COMl'ANY      133 


FINAL  DECKEE. 

At  a  session  of  the  Circuit  Court  of  tiie  United  States 
for  the  Eastern  District  of  Michigan,  continued  and  held 
pursuant  to  adjournment,  at  the  District  Court  Room,  in 
the  City  of  Detroit,  on  Friday  tlie  thirteenth  day  of  Octo- 
ber, in  the  year  one  thousand  nine  hundred  and  five. 

Present:  The  Honorable  Henry  H.  Swan,  District 
Judge. 


Xo.  3898. 
In  Equity. 


National  Biscuit  Company, 

vs. 
Hammell  Cracker  Company,  and  v 
James    F.    Hammell,    Samuel 
Dumphy  and  P.  J.  Hammell. 

This  day  came  the  above  named  complainant,  the  Na- 
tional Biscuit  Company,  by  Mr.  Earl  D.  Babst  and 
Charles  K.  Offield,  its  Solicitors  and  of  Counsel,  and  the 
defendants  by  Messrs.  Thomas,  Cunnnins  &  Xicliols,  their 
Solicitors  and  of  Counsel,  and  it  appearing  to  the  Court 
that  the  defendants  do  not  further  desire  to  contest  this 
action,  and  that  they  have  settled  with  and  paid  to  the 
complainant  the  damages,  profits  and  costs  arising  out 
of  this  action  and  the  acts  complained  of  in  tlie  Bill  of 
Complaint,  and  that  there  nothing  remains  as  to  this  liti- 
gation, except  as  to  the  subject  matter  of  injunction,  and 
the  entry  of  final  decree  so  expressed  herein,  the  defend- 
ant consenting  thereto, 

Now,  THEREFORE,  TT  IS  ORDERED,  ADJUDGED  AND  DECREED: 

First:   That  the  complainant  is  the  true,  riglitful  origi- 
nator and  sole  owner  of  a  certain  trade-mark,  or  svml)ol 
consisting  of  a  red  end  seal  upon  the  ends  of  cartons  or 
packages,  containing  bakery  products,  having  a  red  back- 
ground and  white  line  markings  tliereon; 


Ill 


w 


I 


134     NATIONAL  BISCUIT  COMPANY  i«.  HAMMELL  CRACKER  COMPANY 

Second:  That  the  defendants  have  infringed  upon  and 
violated  the  exclusive  rights  of  the  complainant  by  the 
use  and  application  upon  the  ends  of  their  cartons  con- 
taining bakery  products,  of  a  red  end  seal  with  white  line 
markings  thereon; 

Third:  That  the  said  defendants,  Hamniell  Cracker 
Company,  James  F.  Hammell,  Samuel  Dumphy  and  P.  J. 
Hammell  and  each  of  them,  and  their  respec^tive  agents, 
servants,  and  employes,  and  each  of  them,  be  and  hereby 
are  perpetually  enjoined  from  afl&xing,  using  or  applying, 
or  causing  to  be  affixed,  used  or  applied,  in  any  way,  upon 
cartons  or  the  ends  of  cartons  containing  bakery  prod- 
ucts, any  red  seal  with  white  line  markings  thereon,  or 
from  using  or  applying  upon  the  ends  of  their  cartons, 
containing  bakery  products,  any  seal  in  simulation  or  imi- 
tation of  complainant's  red  end  seal,  or  *  *  In-er-seal' ' 
trade-mark ; 

Fourth:  It  further  appearing  to  this  Court  that  the 
said  defendants  have  settled  and  paid  the  complainant 
the  damages  to  complainant  and  profits  to  the  defendants 
arising  out  of  the  infringing  acts  complained  of,  and  also 
paid  to  the  complainant  the  costs  in  this  case,  no  refer- 
ence to  the  Master  for  any  purpose  is  therefore  made  in 
this  ease,  and  this  decree  as  entered,  is  to  be,  and  stand, 
as  final. 


NATIONAL  BISCUIT  COMPANY  vs.  HAMMELL  CRACKER  COMPANY     135 

of  Final  Decree  in  the  therein  entitled  cause  as  the  same 
appears  on  file  and  of  record  in  my  office;  that  I  have 
compared  the  same  with  the  original  and  it  is  a  true  and 
correct  transcript  therefrom  and  of  the  whole  thereof. 

In  Testimony  Whekeof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court,  at  Detroit,  in  said  dis- 
trict, this  13th  day  of  October,  in  the  year  of  our  Lord 
one  thousand  nine  hundred  and  five,  and  of  the  Indepen- 
dence of  the  United  States  of  America,  the  one  hundred 
and  tlnrtieth. 

Walter  S.  Harsiia,  Clerk. 
By  Adelaide  Anderson  Voobheis, 

Deputy  Clerk, 


United  States  of  America,     \ 
Eastern  District  of  Michigan.)^ 

I,  Walter  S.  Harsha,  Clerk  of  the  Circuit  Court  of  the 
United  States  for  the  Eastern  District  of  Michigan,  do 
hereby  certify  that  the  above  and  foregoing  is  a  true  copy 


136     NATIONAL  BISCUIT  COMPANY  V8.  HAMMELL  CRACKER  COMPANY 


II 


I- 
■ill 


INJUNCTION. 

UNITED  STATES  OF  AMERICA : 

The  Circuit  Court  of  the  United  States 

For  the  Eastern  District  of  Michigan,  In  Equity. 

The  President  of  the  United  States  of  x\m erica, 

To  Hammell  Cracker  Company,  and  James  F.  Ham- 
niell,  Samuel  Diimphy  and  P.  J.  Hammell ,  and  to  their 
counselors,  attorneys,  solicitors,  trustees,  agents  and 
servants,  and  each  and  every  of  them,  Greeting : 

Whereas,  It  has  been  represented  to  us,  in  the  Circuit 
Court  of  the  United  States  for  the  Eastern  District  of 
Michigan,  in  Equity,  on  the  part  of  the  National  Biscuit 
C^oinpany,  Complainant,  that  it  has  lately  exhibited  a  Bill 
of  Complaint  and  Decree  against  you  the  said  Hammell 
Cracker  Company,  and  James  F.  Hammell,  Samuel  Dum- 
phy  and  P.  J.  Hammell,  Defendants,  to  be  relieved,  touch- 
ing the  matters  therein  complained  of;  in  wliich  bill  and 
decree  it  is  stated,  among  other  things,  that  you  are  com- 
bining and  confederating  with  others  to  injure  the  said 
plaintiff  touching  the  matters  set  forth  in  the  said 
bill,  and  that  your  actings  and  doings  in  the 
premises  are  contrary  to  equity  and  good  con- 
science; we  therefore,  in  consideration  tliereof,  and 
of  the  particular  matters  in  the  said  bill  and  de- 
cree set  forth,  do  strictly  command  you,  the  said 
Hammell  Cracker  Company,  and  James  F.  Hammell, 
Samuel  Dumphy  and  P.  J.  Hammell,  and  the  persons  be- 
fore mentioned,  and  each  and  every  of  you,  under  the 
penalty  of  Ten  Thousand  Dollars,  to  be  levied  of  your 
lands,  goods,  and  chattels,  to  our  use,  that  you  do  abso- 


NATIONAL  BISCUIT  COMPANY  vs.  HAMMELL  CRACKER  COMI'ANY      137 

lutely  desist  and  refrain  from  perpetually  from  afl^ing, 
using  or  applying  or  causing  to  be  affixed,  used  or  ap- 
plied, in  any  way,  upon  cartons  or  the  ends  of  cartons 
containing  bakery  products,  any  red  seal  with  white  line 
markings  thereon,  or  from  using  or  applying  upon  the 
ends  of  their  cartons,  containing  bakery  products,  any 
seal  in  simulation,  or  imitation  of,  complainant's  red  end 
seal,  or  **In-er-sear'  trade-mark,  until  the  further  order 
of  this  Court. 

.  Witness,  the  Honorable  Melville  W.  Fuller,  Chief  Jus- 
tice of  the  Supreme  Court  of  the  United  States,  this  thir- 
teenth  day  of  October  in  the  year  of  our  Lord  one  thou- 
sand nine  hundred  and  five  and  of  the  independence  of 
the  United  States  of  America  the  one  hundred  and  thir- 
tieth. 

Walter  S.  Harsha, 

Clerk. 
By  Adelaide  Anderson  Voorheis, 

Deputy  Clerk. 


United  States  of  America,     ) 
Eastern  District  of  Michigan.}  ^^* 

I,  Walter  S.  Harsha,  Clerk  of  the  Circuit  Court  of  the 
United  States  for  the  Eastern  District  of  Michigan,  do 
hereby  certify  that  the  above  and  foregoing  is  a  true  copy 
of  Perpetual  Injunction  in  the  therein  entitled  cause  as 


! 


138 


NATIONAL  BISCUIT  COMPANY  r«.  HAMMELL  CRACKER  COMPANY 


the  same  appears  on  file  and  of  record  in  my  office ;  that 
I  have  compared  the  same  with  the  original  and  it  is  a 
true  and  correct  transcript  therefrom  and  of  the  whole 
thereof. 

In  testimony  whereof,  I  have  hereunto  set  my  hand 
and  affixed  the  seal  of  said  Court,  at  Detroit,  in  said  dis- 
trict, this  13th  day  of  October,  in  the  year  of  our  Lord 
one  thousand  nine  hundred  and  five,  and  of  the  Inde- 
pendence of  the  United  States  of  America  the  one  hun- 
dred and  thirtieth. 

Walter  S.  Harsh  a, 

Clerk. 
By  Adelaide  Anderson  Voorhets, 

Deputy  Clerk. 


(Hxvcnxt  (Hmvt  of  %  Intt^h  ^tatea 


District  of  Indiana 


NATIONAL  BISCUIT  COMPANY        ^ 

Complainant, 

V9. 

ISAAC  F.  WHITESIDE 

Defendant. 


IN  EQUITY 
No.   104  lo 


DEMURRER  AND  ORDER 
OVERRULING  DEMURRER 


OFFIELD,  TOWLE  &  LINTHICUM 

Solicitors  for  Complainant. 

W.  H.  H.  MILLER 
CHARLES  K.  OFFIELD 
EARL  D.  BABST 

Of  Counsel  for  Complainant. 

HARVEY,  PICKENS,  COX  &  KAHN 

Solicitors  for  Defendant. 

KEALING  &  HUGG 

BAKEWELL  &  CORNWALL 

Of  Counsel  for  Defendant. 


NATIONAL  BISCUIT  rOMPANY  t;«.  WHITESIDE 


141 


DEMURRER. 

Circuit  Court  of  the  United  States. 
District  of  Indiana. 


National  Biscuit  Company, 

Complainant, 
vs. 
Isaac  F.  Whiteside, 

Defendant, 


In  Equity. 
^No.  10410. 


The  Demurrer  of  Isaac  F.  Whiteside,  the  defendant 
above  named  to  the  Bill  of  Complaint  of  National  Biscuit 
Company,  complainant. 

This  defendant,  Isaac  F.  Whiteside,  by  protestation, 
not  confessing  or  acknowledging  all  or  any  of  the  mat- 
ters and  things  in  the  said  complainant's  bill  to  be  true, 
in  such  manner  and  form  as  the  same  are  therein  set 
forth  and  alleged,  doth  demur  thereto  and  for  cause  of 
demurrer  showeth: 

1.  That  the  said  complainant  has  not  in  and  by  its 
said  bill  made  or  stated  any  such  cause  as  doth  or  ought 
to  entitle  it  to  any  such  discovery  or  relief  as  thereby 
sought  and  prayed  for  from  or  against  this  defendant. 

2.  That  it  does  not  appear  from  the  facts  stated  in 
said  bill  that  the  complainant  is  entitled  to  the  exclusive 
use  of  what  is  designated  in  said  bill  as  complainant's 
*'In-er-sear'  trade-mark. 

3.  That  it  does  not  appear  from  the  allegations  of 
said  bill,  or  from  the  exhibits  therein  referred  to,  that 
defendant  has  infringed  and  is  now  infringing  any  ex- 
clusive right  of  complainant  in  and  to  the  '^In-er-seaP' 
mark  referred  to  in  the  bill  of  complaint. 

4.  That  it  does  not  appear  from  the  facts  stated  in 
the  bill  of  complaint  herein  that  complainant  is  entitled 


I 


142 


NATIONAL  BISCUIT  COMPANY  V8.  WHITESIDE 


to  the  exclusive  use  of  what  is  herein  designated  as 
complainant's  **Uneeda''  or  **Uneeda  Biscuit''  trade- 
mark or  trade-name. 

5.  That  it  does  not  appear  from  said  bill  of  com- 
plaint, or  from  the  exhibits  referred  to  therein,  that  de- 
fendant has  infringed  any  exclusive  right  of  complainant 
in  the  name  *^Uneeda"  or  **Uneeda  Biscuit." 

6.  That  as  to  the  things  designated  as  ''the  nine  re- 
maining complainant's  exhibits,"  referred  to  in  para- 
graph sixteen  of  the  bill,  it  does  not  appear  from  said 

bill— 

(a)  That  the  same  are  described  in  said  bill  with 
sufficient  particularity  for  the  defendant  to  answer  in 
respect  to  the  same; 

(b)  That  it  does  not  appear  from  said  bill  that  com- 
l)lainant  has  any  exclusive  right  with  respect  to  any  or 
all  of  said  exhibits; 

(c)  That  it  does  not  appear  from  said  bill,  or  from 
the  exhibits  referred  to  therein,  that  defendant  has  in- 
fringed, or  is  now  infringing,  any  exclusive  rights  of 
complainant  with  respect  to  any  or  all  of  said  exhibits. 

7.  That  complainant  has  not  in  and  by  its  bill  of  com- 
plaint shown  that  it  is  entitled  to  the  sole  and  exclusive 
use  of  the  form  and  arrangement  and  dress  of  the  pack- 
age referred  to  in  paragraph  ''ninth"  of  the  bill  of  com- 
plaint as  "Complainant's  Exhibit  Carton  Trade  Name 
Uneeda  Biscuit  and  Wrapper";  nor  has  complainant 
shown  by  its  said  bill  that  defendant  has  infringed,  and 
is  now  infringing,  any  exclusive  right  of  complainant  in 
and  to  the  same. 

8.  That  it  does  not  appear  from  the  said  bill  of  com- 
plaint that  complainant  is  entitled  to  the  exclusive  use  of 
the  name  "Jersey  Butter"  as  applied  to  crackers  or 
biscuits;  nor  does  it  appear  from  said  bill  that  defendant 
has  infringed,  or  that  defendant  is  now  infringing,  any 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


143 


exclusive  right  of  complainant  in  the  name  "Jersey  But- 
ter"  as  applied  to  crackers  or  biscuit. 

9.  That  it  does  not  appear  from  said  bill  that  com- 
plainant is  entitled  to  the  exclusive  use  of  the  figure  of  a 
cow  stamped  or  marked  on  crackers ;  nor  does  it  appear 
from  the  bill  that  defendant  has  infringed,  or  is  now  in- 
fringing, any  exclusive  right  of  complainant  in  respect 
to  the  figure  of  a  cow  stamped  or  marked  on  crackers  or 
biscuit. 

10.  That  it  does  not  appear  from  the  bill  of  com- 
plaint that  complainant  is  entitled  to  the  exclusive  use 
of  the  word  "Crisp"  or  "Crispy"  as  applied  to  crackers 
or  biscuit ;  nor  does  it  appear  from  said  bill  that  defend- 
ant has  infringed,  or  that  defendant  is  now  infringing, 
any  exclusive  right  of  complainant  in  and  to  the  word 
"Crisp"  or  "Crispy"  as  a  mark  or  name  for  crackers 
or  biscuit. 

11.  That  as  to  all  of  said  bill  which  undertakes  to 
claim  infringement  by  defendant  in  respect  to  complain- 
ant's alleged  cartons  or  packages  referred  to  therein  as 
"Complainant's  Exhibits  Cartons  Baking  Products, 
Numbers  1,  2,  3,  4,  5,  6,  7,  8,  9,  10  and  11,"  "Complain' 
ant's  Exhibit  Complainant's  Carton  Trade  Name  Uneeda 
Biscuit  and  Wrapper,"  and  "Complainant's  Exhibit 
Complainant's  In-er-seal  trade-mark,"  complainant  is 
not  in  equity  with  clean  hands  and  is  not  entitled  to  any 
equitable  relief  in  this  cause,  as  it  appears  from  said  ex- 
hibits, which  are  referred  to  in  the  bill  and  made  part 
thereof  by  the  allegations  of  the  bill,  as  well  as  from  mat- 
ters of  which  this  Court  will  take  judicial  notice,  that 
as  to  each  of  said  cartons  it  distinctly  appears  that  the 
same  (on  the  outer  wrapper  thereof)  is  now  being  repre- 
sented by  complainant  as  patented  March  28,  1899 
(which  is  the  date  of  the  Peters  U.  S.  Patent  No.  621,974 
relating  to  cartons).  Whereas,  as  appears  from  Vol- 
ume 125  of  the  Federal  Reporter,  between  pages  601 


I 


idi^ 


144 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


and  609  thereof  (of  which  this  Court  will  take  judicial 
notice),  on  the  23rd  day  of  November,  1903,  the  said 
Peters  Patent  for  Carton  was  declared  invalid  by  the 
United  States  Circuit  Court  of  Appeals  for  the  Eighth 
Circuit,  on  the  ground  that  the  same  failed  to  disclose 
patentable  novelty ;  and  that  it  appears  from  the  opinion, 
of  the  United  States  Circuit  Court  in  said  cause  (120  Fed- 
eral Reporter,  between  pages  679  and  687),  which  opinion 
of  the  United  States  Circuit  Court  was  reversed  by  the 
United  States  Circuit  Court  of  Appeals  for  the  Eighth 
Circuit  in  the  case  reported  in  125  Federal  Reporter, 
supra,  that  the  complainant  in  this  cause,  the  National 
Biscuit  Company,  was,  at  the  time  said  cause  of  Peters 
vs.  Union  Biscuit  Company  (reported  in  the  Federal  Re- 
porter, volumes  120  and  125,  supra)  was  pending  and 
prior  thereto,  the  exclusive  licensee  of  Peters,  the  pat- 
entee of  said  patent  No.  621,974,  of  March  28,  1899,  so 
far  as  said  patent  might  be  used  for  packing  bakery 
products.     Therefore,  it  appears  from  the  said  bill  of 
complaint,  from  complainant's  exhibits  above  referred 
to,  and  from  matters  of  which  this  Court  will  take  ju- 
dicial notice,  that  at  the  time  of  filing  tlie  bill  in  this 
cause  and  since  the  decision  of  the  United  States  Circuit 
Court  of  Appeals  for  the  Eighth  Circuit,  rendered  No- 
vember 23, 1903,  in  said  cause  of  Union  Biscuit  Company, 
appellant,  vs.  Peters,  appellee  (see  125  Federal  Reporter, 
601-609),  that  complainant  is  still    holding  out  to  the 
public  that  said  exhibit  cartons  or  packages  are  pro- 
tected by  said   Peters'    United    States   letters    patent, 
dated  March  28,  1899,  whereas,  at  the  time  of  filing  this 
bill  of  complaint  and  said  exhibits,  and  since  about  one 
year  before  the  filing  of  the  same,  the  said  Peters'  Pat- 
ent of  March  28, 1899,  has  been  adjudged  of  no  force  and 
effect  by  the  United  States  Circuit  Court  of  Appeals  for 
the  Eighth  Circuit,  which  opinion  and  the  decree  entered 
in  pursuance  of  the  same  is  now,  and  was  at  the  time  of 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


145 


filing  the  bill  of  complaint  herein,  in  full  force  and  effect, 
as  complainant  well  knew  at  the  time  of  filing  the  bill  of 
complaint  herein. 

12.  That  it  appears  from  said  bill  and  the  exhibits 
filed  therewith,  as  well  as  from  matters  of  which  this 
Court  will  take  judicial  notice,  that  this  defendant  has 
not  infringed  the  alleged  trade-marks,  trade-names  or 
wrappers  of  complainant,  there  not  being  such  similarity 
between  the  alleged  trade-marks,  trade-names  or  wrap- 
pers of  complainant  and  those  of  defendant,  as  shown 
by  the  exhibits  filed  in  connection  with  complainant 's  bill, 
as  would  deceive  an  ordinary  purchaser  using  reasonable 
care  so  that  he  would  buy  the  goods  of  defendant  believ- 
ing them  to  be  the  goods  of  complainant. 

13.  That  complainant  has  not  in  and  by  its  said  bill 
stated  such  a  case  as  doth  or  ought  to  entitle  it  to  any 
equitable  relief  by  way  of  injunction  as  against  defend- 
aiit,  it  not  appearing  from  said  bill  that  at  the  time  of 
filing  the  same  this  defendant  was  continuing  to  do  the 
acts  of  which  complaint  is  made  as  acts  done  in  the  past 
by  this  defendant,  nor  does  it  appear  from  said  bill  that 
defendant  is  threatening  to  do,  or  about  to  do,  the  alleged 
acts  complained  of  as  having  been  done  by  the  defend- 
ant. 

14.  As  to  the  allegations  of  fraud  in  the  bill  of  com- 
plaint, they  are  immaterial,  since  it  appears  from  the 
whole  bill,  and  the  exhibits  filed  therewitli,  notwithstand- 
ing the  epithets  as  to  fraud  used  therein,  that— 

(a)  Complainant  has  no  standing  in  a  court  of  equity ; 

(b)  Complainant  has  no  exclusive  rights  which  have 
been  violated  by  defendant ; 

(c)  Said  allegations  of  fraud,  taken  in  connection  with 
the  bill  and  exhibits  filed  therewith,  do  not  connect  de- 


.  t 


iitHMMU 


146 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


fendant  with  any  specific  acts  which  make  him  responsi- 
ble to  complainant  in  this  action. 

15.  That  the  bill  fails  to  show  such  facts  in  regard  to 
the  use  by  defendant  of  any  package,  carton,  trade-mark 
or  wrapper  as  constitute  unfair  competition  in  trade  on 
the  part  of  defendant  in  respect  to  any  article  sold  by 
complainant,  in  that  it  does  not  appear  from  said  bill 
that  any  article  made  and  sold  by  defendant  has  been 
sold,  or  is  likely  to  be  sold,  to  any  one  as  and  for  the 
goods  of  the  complainant. 

16.  That  as  to  paragraph  '^fourteen"  of  the  bill,  it 
does  not  constitute  any  cause  of  action,  nor  does  it  con- 
stitute any  inducement  to  any  cause  of  action,  since  it 
does  not  appear  therefrom  that  if  defendant  did  employ 
persons  formerly  in  the  employment  of  complainant,  he 
thereby  did  an  unlawful  thing,  or  anything  the  doing  of 
which  can  be  taken  cognizance  of  by  this  Court  in  this 
action;  it  does  not  appear  from  the  allegations  of  para- 
graph ^*fourteen^'  of  the  bill  that  the  said  former  em- 
ployees of  complainant  were  not  free  agents,  free  to 
take  employment  with  others  when  and  where  they  might 
see  fit. 

17.  Referring  to  paragraph  *^ twentieth''  of  the  bill  of 
complaint,  defendant  demurs  thereto  on  the  ground  that 
it  does  not  appear  from  the  allegations  of  the  bill  in  that 
paragraph  or  elsewhere  that  complainant  is  entitled  to 
the  exclusive  use  of  the  certain  metallic  rack  or  holder 
therein  referred  to  and  marked  '* Complainant's  Exhibit 
Complainant's  Retail  Grocer  Carton  Exhibit  Rack";  nor 
does  it  appear  from  the  bill  of  complaint  that  defendant 
has  infringed  any  exclusive  rights  of  the  complainant  in 
and  to  said  rack  or  holder. 

18.  That  notwithstanding  the  allegations  of  the  bill 


i 


J 


NATIONAL  BISCUIT  COMPANY  vs.  WHITErSIDE 


147 


of  complaint  herein  as  to  defendant  having  originally 
been  engaged  wholly  in  the  manufacture  of  bread  and 
afterwards  engaged  in  the  manufacture  of  crackers  and 
biscuit,  it  does  not  appear  that  defendant,  by  reason  of 
such  fact,  is  liable  to  the  complainant  in  this  suit ;  since 
it  does  not  appear  from  the  allegations  of  the  bill  of  com- 
plaint, nor  could  it  be  recognized  in  law  as  a  sound 
principle  if  it  do  appear  from  the  bill  of  complaint  that 
complainant  is  entitled  to  the  exclusive  monoply  in  the 
manufacture  and  sale  of  crackers  and  biscuit. 

19.  That  as  to  the  allegations  contained  in  ''twenty- 
fifth"  and  ^'twenty-sixth"  paragraphs  of  the  bill,  the 
same  constitute  no  cause  of  action,  neither  do  they  con- 
stitute any  inducement  to  any  cause  of  action,  against  this 
defendant,  and  are  mere  surplusage,  for  the  following 
reasons : 

(a)  The  defendant  is  not  shown  to  be  a  party  nor  is 
defendant  shown  to  be  in  privity  with  any  party,'  to  any 
suit  stated  or  referred  to  in  either  of  said  clauses  of  the 

bill; 

(b)  It  appears  from  said  decisions  or  decrees  in  all  of 
said  cases  (if  the  Court  chooses  to  refer  to  the  same)  that 
the  facts  in  each  and  all  of  said  cases  are  utterly  and 
eTitirely  different  from  the  facts  in  the  case  presented  by 
the  bill  m  this  case; 

(c)  That  the  question  as  to  defendant's  liability  in 
this  action  IS  to  be  determined  by  the  facts  in  this  case- 
and,  on  this  demurrer,  it  clearly  appears  that  complainant 
has  stated  no  cause  of  action,  no  matter  whether  or  not  in 
other  cases  against  different  defendants,  under  totally 
different  states  of  facts,  complainant  has  been  able  to 
state  and  establish  causes  of  action. 

Wherefore,  and  for  divers  other  good  causes  of  de- 
murrer appearing  in  the  said  bill,  this  defendant  demurs 
thereto  and  humbly  demands  the  judgment  of  this  Court 


1 


t 


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148 


NATIONAL  BISCUIT  COMPANY  V8,  WHITESIDE] 


whether  he  shall  be  compelled  to  make  any  further  or 
other  answer  to  the  said  bill,  and  prays  to  bo  hence  dis- 
missed with  his  costs  and  charges  in  this  behalf  most 
wrongfully  sustained. 

Harvey,  Pickens,  Cox  &  Kahn, 

Solicitors  for  Defendant, 

Kealing  &  Hugo, 

BaKEWELL   &    CoRNWALrl., 

Paul  Bakbweill, 

Of  Counsel  for  Defendant. 

State  op  Missouri,] 
City  of  St.  Louis.}  ^^• 

Isaac  F.  Whiteside,  being  duly  sworn,  on  his  oath 
states  that  he  is  the  defendant  above  named,  and  that  the 
foregoing  demurrer  is  not  interposed  for  delay. 

Isaac  F.  Whiteside. 

Sworn  to  and  subscribed  before  me  this  3rd  day  of 
February,  1905. 

My  Term  expires  17th  February,  1905. 

George  Bakewell, 
Notary  Public. 


national  biscuit  company  v8.  whitksidb 


149 


ORDER  OVERRULING  DEMURRER. 

In  the  Circuit  Court  of  the  United  States 

For  the  District  of  Indiana. 

May  Term,  1905.  June  17th,  A.  D.  1905. 

Before  the  Honorable  Albert  B.  Anderson,  Judge. 


National  Biscuit  Company 

vs. 
Isaac  F.  Whiteside. 


"No.  10,410    Chancery. 


Come  now  the  parties  by  their  respective  solicitors,  and 
thereupon  the  Court  having  heard  the  argument  of  Coun- 
sel and  being  sufficiently  advised  in  the  premises  doth  now 
""T""^  1        demurrer  to  the  bill  of  complaint  herein 

And  the  defendant  is  ruled  to  answer  by  the  first  Mon- 
day of  September  next. 


United  States  of  America 
District  op  Indiana. 


i 


ss. 


I,  Noble  C.  Butler,  Clerk  of  the  Circuit  Court  of  the 
United  States  for  the  District  of  Indiana,  do  hereby  certi- 
fy that  the  above  and  foregoing  is  a  full,  true  and  com- 
plete copy  of  an  order  entered  in  said  court  on  the  17th 


I 


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150 


NATIONAL  BISCUIT  eOMPANY   r».   VVHITESll'K 


day  of  June,  1905,  in  the  cause  entitled  National  Biscuit 
Company  vs.  Isaac  F.  Whiteside,  as  fully  as  the  same 
appears  of  record  in  my  office. 

Witness  my  hand  and  the  seal  of  said  court,  at  In- 
dianapolis in  said  District  this  1st  day  of  November,  A. 

D.  1905. 

Noble  V.  Butler, 

Clerk. 


NATIONAL  BISCUIT  COMl'ANY   is.  WHITKSIDE 


151 


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150  NATIONAL   IUS(M  rr  ( OMTANV    rs.    WIHTKSIMO 

day  of  June,  1905,  in  tlie  cause  entitled  National  Biscuit 
Company  vs.  Isaac  V.  AVliiteside,  as  fully  as  the  same 
appears  of  record  in  my  ofHce. 

AVitncss  my  liand  and  tlie  seal  of  said  ctmrt,  at  In- 
dianapolis in' said  District  this  1st  day  of  November,  A. 

]).  11)05. 

Noble  ('.  Butler, 

Clerk. 


NATIONAL   niSCl  rr  CM>MrA\Y    rs.   WHITKSIDE 


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NATIONAL  BISCUIT  COMPANY  V8,  WHITESIDE 


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STIPULATION. 

United  States  Cikcuit  Court, 
District  of  Indiana. 


National  Biscuit  Company, 

Complainant, 


ViS. 

Isaac  F.   Whiteside, 

Defendant, 

St.  Louis,  November  9,  1906. 

A  settlement  of  the  above-entitled  case  is  agreed  to 
between  the  parties  complainant  and  defendant,  as  fol- 
lows: 

The  original  package  exhibits  and  samples  of  loose 
crackers  referred  to  in  the  bill  of  complaint  in  this  case 
and  made  part  thereof  having  been  produced  for  the  pur- 
pose of  inspection  by  both  parties,  it  is  agreed  as  follows : 
That  as  to  Mothers  Biscuit  package  marked  **  Com- 
plainant's Exhibit,  Defendant's  Infringing  Carton  No. 
1,"  it  is  agreed  that  Defendant  shall  abandon  the  use  of 
the  red  color  on  the  end  seal,  and  instead  of  the  red  col- 
ored end  seal  shall  use  an  end  seal  of  yellow. 

The  color  of  the  w^rapper  shall  be  changed  from  blue 
to  green.  A  sample  of  the  changed  form  of  carton  to  be 
used  by  the  Defendant  is  hereto  attached  and  marked 

'* Exhibit  A." 

As  to  Defendant's  Graham  Crackers  complained  of  m 
this  suit,  which  is  marked  ^* Complainant's  Exhibit,  De- 
fendant's Infringing  Carton  No.  2,"  and  which  is  pro- 
vided with  a  red  wrapper,  it  is  agreed  that  the  Defendant 
shall  change  the  wrapper  from  red  to  brown,  and  substi 
tute  a  yellow  end  seal  for  the  red  end  seal.    A  sample  of 


the  change  agreed  upon  is  hereto  attached  and  marked 
*^  Exhibit  B." 

As  to  Defendant's  package  of  Imperial  Toast  marked 
*' Complainant's  Exhibit,  Defendant's  Infringing  Carton 
No.  3,"  Defendant  is  to  abandon  the  wrapper  and  the 
name  Imperial  Toast. 

As  to  Defendant's  Oatmeal  Cracker  package  marked 
* '  Complainant 's  Exhibit,  Defendant 's  Infringing  Carton 
No.  4,"  which  is  provided  with  a  green  wrapper  with  red 
panels  and  with  red  end  seals,  it  is  agreed  that  the  de- 
fendant shall  abandon  the  use  of  that  wrapper  as  w  ell  as 
the  red  colored  end  seals;  but  nothing  in  this  is  to  be 
construed  as  preventing  the  Defendant  from  using  the 
word  ' '  oatmeal ' '  in  connection  w  ith  his  crackers,  or  from 
using  the  name  or  phrase  ''For  Goodness  Sake,"  or  from 
using  his  own  name  in  connection  with  oatmeal  crackers. 

As  to  ^* Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  5"  (Kentucky  Flakes),  it  is  understood 
and  agreed  that  the  Defendant  shall  substitute  a  yellow 
colored  end  seal  for  the  red  end  seal  on  tliat  exhibit,  and 
change  the  body  color  of  the  wrapper,  which  in  said  ex- 
hibit is  white,  from  w^hite  to  a  delicate  blue  color. 

As  to  ** Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  6,"  which  is  Whiteside's  Oyster  Cracker, 
and  is  of  a  gray  or  slate  color  with  red  colored  end  seals,' 
it  is  agreed  that  Defendant,  from  and  after  January  1, 
1907,  shall  change  the  body  color  of  the  said  w^rapper 
from  a  gray  to  a  light  blue  color,  the  red  end  seal  for 
such  packages  having  already  been  changed  by  the  De- 
fendant from  a  red  color  to  a  yellow  color.  Except  as 
above  stated,  the  printed  matter  on  the  said  carton  is  to 
be  the  same  as  on  the  said  exhibit,  should  the  Defendant 
desire  to  use  the  lettering  on  that  exhibit. 

As  to  ^^Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  7,"  being  for  Butter  Thin  crackers,  it  is 


Ill 


164 


NATIONAL  BISCUIT  COMPANY  va.  WHITESIDE 


NATIONAL  BISCUIT  COMPANY  t*.   WHITESIDE 


165 


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understood  and  agreed  that  the  Defendant  has  aban- 
doned that  package. 

As  to  ** Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  8/'  which  is  for  Whiteside's  Butter  crack- 
ers, it  is  agreed  that  from  and  after  this  date  the  Defend- 
ant shall  not  use  a  red  end  seal  and  substitute  therefor  an 
end  seal  of  yellow  color. 

As  to  ** Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  9"  (Mamma's  Ginger  Wafers),  it  ia 
agreed  that  the  Defendant  shall  change  his  red  end  seal  to 
an  end  seal  of  yellow  color. 

As  to  ** Complainant's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  10"  (Whiteside's  Milk  Biscuit),  it  is 
agreed  that  the  defendant  shall  change  his  red  colored 
end  seal  to  a  yellow  colored  end  seal. 

As  to  *' Complainant 's  Exhibit,  Defendant's  Infring- 
ing Carton  No.  11"  (Whiteside's  Cracker  Meal  package), 
it  is  agreed  that  the  defendant  shall,  on  or  before  Janu- 
ary 1,  1907,  make  the  following  changes  in  the  carton  or 
wrapper :  Change  the  outer  wrapper  to  a  yellow  color  and 
substitute  new  directions  and  ornamental  designs  on  the 
said  wrapper.  It  is  also  understood  and  agreed  that  the 
defendant,  as  to  the  last  named  carton  and  wrapper,  has 
changed  the  red  end  seal  to  a  yellow  colored  end  seal. 

As  to  the  separate  cracker  exhibits  in  this  case,  it  is 
agreed  that  on  or  before  January  1,  1907,  the  defend- 
ant shall  take  off  from  said  cracker  the  name  *^ Crispy" 
and  change  the  form  of  said  cracker  from  a  six-cornered 
cracker  to  a  three-cornered  cracker,  and  abandon  the 
word  **  Crispy"  in  connection  with  bakery  products  from 
and  after  January  1,  1907. 

As  to  ** Complainant's  Exhibit,  Defendant's  Infring- 
ing Jersey  Butter  Cracker,"  it  is  agreed  tliat  on  or  be- 
fore January  1,  1907,  the  defendant  shall  take  off  from 
that  cracker  the  picture  of  a  cow,  and  abandon  the  use 


of  the  word  ^^ Jersey"  in  connection  with  the  wrappers, 
boxes  or  display  cans,  or  in  any  way  in  connection  with 
the  manufacture  of  crackers. 

It  is  also  understood  and  agreed  that  the  exhibits 
which  have  been  withdrawn  by  the  Complainant  and  pro- 
duced here  in  connection  with  this  settlement,  and  which 
are  referred  to  in  the  bill  of  complaint,  shall  be  returned 
to  the  Court  so  as  to  form  part  of  the  record  in  this  case. 

It  is  also  agreed  that  from  this  date  on  the  defendant 
shall  abandon  the  use  of  red  colored  end  seals  in  con- 
nection with  any  bakery  products  manufactured  or  sold 
by  the  defendant,  and  that  instead  of  red  colored  end 
seals  he  shall  use  a  yellow  colored  end  seal,  or  some  color 
distinctly  different  from  red. 

It  is  also  agreed  that  the  taxable  costs  in  this  suit 
shall  be  paid  by  the  defendant. 

It  is  also  agreed  that  in  settlement  of  all  claims  for 
profits  and  damages  on  account  of  past  infringements 
alleged  in  the  bill  of  complaint  herein,  the  defendant  has 
paid  to  the  complainant  a  sum  of  money  satisfactory  to 
the  complainant,  receipt  of  which  is  hereby  acknowledged 
by  the  complainant. 

It  is  also  agreed  that  a  consent  decree  for  a  perpetual 
injunction,  consistent  with  this  settlement,  shall  go 
against  the  defendant  in  respect  to  the  packages  herein- 
before specified,  with  the  understanding  that  that  injunc- 
tion shall  be  suspended  until  January  1,  1907,  in  respect 
to  certain  of  the  packages  specified  herein  and  as  fullv 
explained  herein ;  and  that,  the  changes  in  the  packages 
herein  specified  being  made  by  the  defendant,  it  shall  not 
be  contended  by  the  complainant,  at  any  time,  that  the 
packages,  so  changed  as  specified  herein,  are  within  the 
scope  of  any  injunction  that  may  be  entered  in  this  case 
in  pursuance  of  this  agreement. 


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166 


NATIONAL  BISCUIT  COMPANY  V8.  WHITETSIDE 


Executed  in  triplicate  at  St.  Louis,  Missouri,  this  9tli 

day  of  November,  1906. 

Earl  D.  Babst 

OfFIELD,    ToWDE    &    LiNTHICUM 

Solicitors  and  of  Counsel  for 
National  Biscuit  C'ompany. 

Paul  Bakewell 
Solicitor  and  of  Counsel  for 

Isaac  F.  Whiteside. 
W.  H.  H.  Miller 

Of  Counsel  for  Complainant. 

L.  M.  Harvey 

Of  Counsel  for  Defendant. 


national  biscuit  company  is.  whitetside 


167 


FINAL  DECREE. 
In  the  Circuit  Court  of  the  United  States. 


For  the  District  of  Indiana. 


November  Term  1906. 


December  10th,  1906. 


Before  Honorable  Albert  B.  Anderson,  Judge. 


National  Biscuit  Company, 

Complainant, 

V. 

Isaac  F.  Whiteside, 

Defendant. 


> 


No.  10410. 


This  cause  coming  on  to  be  heard  upon  the  pleadings 
and  on  the  proofs  taken  on  behalf  of  the  Complainant, 
Messrs.  Miller,  Shirley  &  Miller  and  Messrs.  C.  K.  Offield 
and  Earl  D.  Babst  appearing  on  behalf  of  Complainant 
and  Messrs.  Harvey,  Pickens,  Cox  &  Kahn  and  Mr.  Paul 
Bakewell  in  behalf  of  the  Defendant,  and  the  Defendant 
not  desiring  to  further  contest  this  cause,  a  settlement 
having  been  made  between  the  parties,  it  is  therefore 
ordered,  adjudged  and  decreed  as  follows : 

1.  That  a  settlement  of  damages  and  profits  having 
been  made  by  the  parties  and  such  damages  and  profits 
paid  under  such  settlement,  that  no  reference  to  the 
Master  is  therefore  made. 

2.  That  the  taxable  costs  in  this  case,  which  it  is 
agreed  between  counsel  in  this  case  amount  to  $140.35, 
have  been  paid  by  the  Defendant. 


Id 


>» 


if 


>  ! 


168 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


3.  That  an  injunction  issue  according  to  the  prayer 
of  Paragraph  1  of  Clause  3  of  the  bill  of  complaint  in  this 
case  as  against  carton  exhibits  Nos.  1  to  11  inclusive  and 
the  two  individual  cracker  exhibits,  ** Crispy^'  and  **  Jer- 
sey Butter;''  but  such  injunction  is  not  to  take  effect  or 
be  served  until  January  1,  1907. 

4.  That  this  decree  is  therefore  final. 


United  States  of  America,| 
District  of  Indiana,        jj 

I,  Noble  C.  Butler,  Clerk  of  the  Circuit  Court  of  the 
United  States  within  and  for  said  district,  do  hereby 
certify  that  the  above  and  foregoing  are  full  and  true 
copies  of  the  stipulation  filed  and  the  final  decree  entered 
on  the  10th  day  of  December,  1906,  in  the  case  of  the 
National  Biscuit  Company  against  Isaac  F.  Whiteside,  as 
fully  as  the  same  appear  upon  the  files  and  records  now 
in  mv  office. 

Witness  my  hand  and  the  seal  of  said  Court,  at  In- 
dianapolis in  said  district  this  12th  day  of  December, 
1906. 

Noble  C.  Butler, 

Clerk. 


NATIONAL  BISCUIT  COMPANY  vs.  WHITESIDE 


169 


INJUNCTION. 

Ix  THE  Circuit  Court  of  the  United  States, 
For  the  District  of  Indiana. 

THE  UNITED  STATES  OF  AMERICA. 

To  Isaac  F,  Whiteside,  his  servants,  agents  and  em- 
ployees, and  all  claiming  or  holding  through  or  under  him, 
Greeting : 

You,  and  each  of  you,  are  hereby  strictly  restrained 
and  perpetually  enjoined  from  in  any  manner  whatso- 
ever handling,  advertising  or  selling  packages  or  cartons 
containing  bakery  products  having  upon  the  ends  thereof 
any  red  seal  with  white  line  markings  thereon,  or  red 
seal  substantially  like  the  seal  or  Trade  Mark  of  the 
National  Biscuit  Company,  or  from  making,  using,  sell- 
ing or  handling  cartons  like  the  National  Biscuit  Com- 
pany's carton  containing  the  National  Biscuit  Company's 
Trade  Name  ^^Uneeda  Biscuit"  with  wrapper  accompani- 
ment as  shown  in  the  'National  Biscuit  Company's  ex- 
hibit of  the  same  in  the  cause  in  said  court  entitled  the 
National  Biscuit  Company  against  Isaac  F.  Whiteside. 
No.  10,410,  or  the  use  of  the  word  ** Biscuit"  upon  a  white 
parallelogram,  as  shown  in  Complainant's  exhibit  De- 
fendant's Infringing  Carton  No.  1,  in  said  cause,  whether 
preceded  by  the  word  ** Mothers"  or  any  word  associated 
therewith,  or  from  the  use  of  any  wrapper  application 
similar  to  or  substantially  like  the  wrapper  application 
upon  the  National  Biscuit  Company's  **Uneeda  Biscuit" 
package;  or  from  the  use  of  any  wrapper  or  red  body 
color  like  or  similar  to  the  Graham  Wrapper  of  red  body 
color  of  the  National  Biscuit  Company,  shown  in  Com- 
plainant's Exhibit  Carton  Bakery  Product  No.  2,  in  said 
cause  of  the  National  Biscuit  Company  against  Isaac  F. 


II 


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170 


NATIONAL  BISCUIT  COMPANY  vs,  WHITESIDE 


AVhiteside,  No.  10410,  or  from  in  any  manner  copying  or 
simulating  the  other  carton  exhibits  of  the  National  Bis- 
cuit Company  with  its  wrapper  accompaniment  and  red 
seal  thereon,  as  shown  and  identified  by  the  various  ex- 
hibits filed  in  said  above  entitled  cause;  or  from  selling 
crackers  in  bulk  like  Complainant's  Exhibit  Complain- 
ant's Jersey  Butter  Cracker,  and  Complainant's  Exhibit 
Complainant's  Crispy  Cracker,  filed  in  said  above  en- 
titled cause ;  and  from  violating  and  infringing  the  rights 
of  the  said  National  Biscuit  Company  as  hereinabove  set 
forth. 

Whereof  you  are  not  to  fail  at  your  peril. 

Witness  the  Honorable  Melville  AY.  Fuller,  Chief 
Justice  of  the  Supreme  Court  of  the  United  States  and 
the  seal  of  said  Circuit  Court  at  Indianapolis  in  said 
District,  this  1st  day  of  January,  A.  D.  1907. 

Noble  C.  Butlee, 

Clerk. 


n 


NATIONAL  BISCUIT  COMPANY   vs.  WHITESIDE 


171 


MARSHAL'S  RETURN. 

United  States  of  Amebic  a,  | 
District  of  Indiana.        j  ^^' 

Received  this  writ  at  Indianapolis,  Jany.  5th,  1907, 
and  served  on  the  within  named  Isaac  F.  AVhiteside,  by 
reading  to  and  in  his  hearing  at  Jeffersonville,  Clark 
County,  Indiana,  Jany.  7th,  1907,  and  by  handing  him 
copy  of  same  on  Jany.  8th,  1907. 

Henby  C.  Pettit,  U.  S.  Marshal, 

By  Alonzo  Boyd,  Deputy. 


United  States  of  Amebica,| 
District  of  Indiana,        ] 

I,  Noble  C.  Butler,  Clerk  of  the  Circuit  Court  of  the 
United  States  for  the  District  of  Indiana,  do  hereby  cer- 
tify that  the  above  and  foregoing  is  a  full,  true  and  com- 
plete copy  of  the  w^rit  of  injunction  and  return  of  the 
marshal  thereon,  filed  in  said  court  on  the  11th  day  of 
January,  1907,  in  the  cause  of  National  Biscuit  Company 
vs.  Isaac  F.  Whiteside,  No.  10410,  as  fully  as  the  same 
remains  on  file  in  my  office. 

Witness  my  hand  and  the  seal  of  said  Court,  at  In- 
dianapolis in  said  District,  this  11th  day  of  January, 
A.  D.  1907. 

Noble  C.  Butleb, 

Clerk. 


F.ii;ii.     I  ■  »nii  pniii|jpj|ini^iCT 


'   i 


! 


I 


J(n  Oliyanirpi^  a(  ^^m  Ifpratg 


Between 

NATIONAL  BISCUIT  COMPANY 

Complainontj 
and 

PACIFIC  COAST  BISCUIT  COMPANY, 
CHARLES  M.  WARNER,  JOHN  C.  HAN- 
RAHAN,  WILLIAM  M.  LAWS,  HER- 
MAN WITTENBERG,  MORITZ  THOM- 
SEN,  CHARLES  HOTCHKISS,  and  A. 
M.  BROOKES,  Officers  and  Directors  of 
said  PACIFIC  COAST  BISCUIT  COM- 
PANY 

Defendants. 


On  Bill 
for  Relief 


CONCLUSIONS 


VREDENBURGH,    WALL    &    CAREY 

Solicitors  for  Complainant 

CHARLES    K.    OFFIELD 
EARL    D.    BABST 

Of  Counsel 

COLLINS   &   CORBIN 

Solicitors  for  Defendants 

WILLIAM    D.    FENTON 

Of  Counsel 


Il    I 


174 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


^it 


! 


H^ 


I 


! 


Nil! 


III! 


•i 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST    BISCUIT    COMPANY 


175 


Between 

National  Biscuit  Company 

Complainant, 

and 

Pacific  Coast  Biscuit  Company, 
and  Charles  M.  Warner,  John 
C.  Hanrahan,  William  M. 
Laws,  Herman  Wittenberg, 
Moritz  Thomsen,  Cha  r  1  e  s 
Hotchkiss  and  A.  M.  Brookes, 
Officers  and  Directors  of  said 
Pacific  Coast  Biscuit  Company 

Defendants, 


> 


On  Bm,  &c. 
CONCLUSIONS. 


On  final  hearing  on  pleadings  and  proofs. 

Messrs.  Vredenburgh,  Wall  d  Carey ,  Mr.  Charles  K. 
Offield  (of  the  Illinois  Bar)  and  Mr.  Earl  D.  Bahst  (of 
the  New  York  Bar),  for  complainants. 

Messrs.  Collins  &  Corbin  and  Mr.  William  D.  Fenton 
(of  the  Oregon  Bar),  for  defendants. 
Walker,  C. 

The  object  of  this  bill  is  to  restrain  unfair  competi- 
tion in  trade. 

The  complainant  and  defendant  companies  are  cor- 
porations organized  under  the  laws  of  this  state.  Both 
are  engaged  in  the  same  line  of  trade,  the  manufacture 
and  sale  of  bakery  products.  The  business  of  the  de- 
fendant company  is  confined  to  the  Pacific  Coast  States 
and  adjacent  territory,  while  the  field  of  activity  of  the 
complainant  company  is  nation  wide.  The  complainant's 
career  commenced  in  1898,  when  it  acquired  some  of  the 
leading  bakery-plants  in  the  country,  with  which  it  be- 


1 


174 


NATIONAL     HISCIIT     COMi'ANV      vs. 
I'ACIFIC    COAST    lUSCl  IT    CO\II*AN\ 


NATIONAL     IJISCIIT     COMPANY      rs. 
PACIFIC    COAST    lilSl'L  IT    COMl'ANV 


-\ 


175 


On  Bill,  &c. 
COXCLUSIUXS. 


Between 

National  Biscuit  Company 

Complainant, 

and 

Pacific  Coast  Biscuit  Company, 
and  Charles  ^1.  Warner,  John  V 
C.  Hanrahau,  William  M. 
l^aws,  Herman  Wittenberg, 
Moritz  Thomsen,  Cha  r  1  e  s 
Hotehkiss  and  A.  M.  Brookes, 
Officers  and  Directors  of  said 
Pacific  Coast  Biscuit  Company 

Defendants. 


On  final  hearing  on  pleadings  and  proofs. 

Messrs.  Vredenburgh,  Wall  &  Carey,  Mr.  Charles  K. 
Offield  (of  the  Illinois  Bar)  and  Mr.  Earl  D.  Babst  (of 
the  New  York  Bar),  for  complainants. 

Messrs.  Collins  S  Corhin  and  Mr.  William  D.  Fenton 
(of  the  Oregon  Bar),  for  defendants. 
Walker,  C. 

The  object  of  this  bill  is  to  restrain  unfair  competi- 
tion in  trade. 

The  complainant  and  defendant  companies  are  cor- 
porations organized  under  the  laws  of  this  state.  Both 
are  engaged  in  the  same  line  of  trade,  the  manufacture 
and  sale  of  bakery  products.  The  business  of  the  de- 
fendant company  is  confined  to  the  Pacific  Coast  States 
and  adjacent  territory,  while  the  field  of  activity  of  the 
complainant  company  is  nation-wide.  The  complainant's 
career  commenced  in  1898,  when  it  acquired  some  of  the 
leading  bakery-plants  in  the  country,  with  wliich  it  be- 


I 


" 


176 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


gan  operations.  It  already  liad  a  market  for  its  goods, 
brought  to  it  by  these  plants,  and  by  the  exercise  of  a  su- 
perior order  of  scientific  and  mechanical  intelligence  and 
of  commercial  acumen  and  industry,  acquired  a  wide  and 
enviable  reputation  for  the  high  quality  of  its  products. 
A  market  for  these  wares  was  established  in  the  defend- 
ant's territory  shortly  after  the  complainant  started 
business  in  1898. 

The  principal  innovation  made  in  the  bakery  line  by 
the  complainant  is  that  of  housing  and  ti'ansmitting  to 
the  ultimate  consumer  bakery  products  with  a  minimum 
of  deterioration,  and  practically  as  they  leave  the  ovens. 
This  is  accomplished  by  the  use  of  paper-cartons.  Up  to 
the  complainant's  advent,  shipments  were  mainly  in 
**bulk,"  that  is,  in  barrels  and  wooden  boxes.  Paper- 
cartons,  of  the  shoe-box  style,  with  loose  paper-lining, 
and  hermetically  sealed  tin-boxes,  were  also  used,  but 
only  to  a  very  limited  extent.  The  tin  boxes  were  com- 
mercially too  costly  and  tlie  shipment  in  bulk  was  objec- 
tionable because  of  the  tendency  of  the  contents  to  ab- 
sorb moisture  and  deleterious  and  offensive  odors,  and 
to  breakage.  Uncleanliness  in  the  handling  by  the  re- 
tailer was  also  to  be  reckoned  with. 

The  paper-cartons  adopted  by  the  complainant  were 
much  smaller  than  those  theretofore  used  and  were  of  a 
size  to  permit  of  sales  at  popular  prices — five  and  ten 
cents  per  package.  These  cartons  are  constructed  by 
superimposing  upon  the  carton  blank,  made  of  card- 
board, a  sheet  of  wax-paper  of  the  size  and  shape  of  the 
blank,  which  when  folded,  form  a  unit-box,  and,  it  is  said, 
possess  the  quality  and  capacity  of  preserving  the  con- 
tents equal  to  the  hermetically  sealed  tin- box.  The  car- 
tons are  of  various  sizes  and  shapes,  adapted  to  the 
forms  of  the  proposed  contents ;  and  to  identify  the  con- 
tents as  its  products,  and  to  distinguish  the  same  from 
those  of  other  dealers,  the  complainant  adopted  a  trade- 


llMl 


llM 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST    BISCUIT    COMl'ANY 


177 


mark  and  a  variety  of  trade-names  for  its  various  pro- 
ducts, and  peculiar  and  distinctive  labels  and  wrappers 
to  envelop  the  cartons,  all  of  which,  it  is  claimed,  the  de- 
fendant fraudulently  simulated,  to  the  injury  and  dam- 
age of  the  complainant's  trade. 

The  alleged  infringement  of  fifteen  widely  different 
styles  of  cartons  and  carton-wrappers  and  applied  trade- 
names, for  as  many  kinds  of  crackers  or  biscuits;  the 
methods  of  construction  of  the  carton  and  of  the  form  of 
bundle-package  of  assembled  cartons,  as  well  as  the 
trade-mark,  is  involved  in  this  litigation. 

The  law  relating  to  fraudulent  or  unfair  competition 
between  traders  is  so  firmly  established  and  has  been  so 
lucidly  illustrated  and  defined  by  the  courts  of  England 
and  of  this  country,  that  extended  citation  of  authorities 
will  be  profitless.  The  underlying  principle  that  no  man 
has  a  right  to  palm  off  his  wares  as  those  of  another, 
thereby  cheating  the  purchasing  public  and  filching  the 
business  of  a  rival,  is  so  essentially  an  element  of  nat- 
ural justice  and  so  solidly  imbedded  in  our  jurispru- 
dence, that  all  that  is  necessary  to  quicken  a  court  of 
equity  is  to  show  that  in  the  particular  instance  the  of- 
fense has  been  committed.  The  cases  cited  by  counsel 
in  their  briefs  exemplify  the  illimitable  conditions  and 
circumstances  under  which  this  simple  doctrine,  requir- 
ing men  to  be  honest  towards  each  other,  may  be  in- 
voked. 

The  case  of  Wirtz  v.  Eagle  Bottling  Company,  50  N, 
J.  Eq.,  164,  is  a  striking  example  of  the  adaptation  of  the 
principle  to  unfair  competition  in  the  use  of  imitative 
labels  and  wrappers.  The  opinion  in  that  case  so  fully 
covers  the  whole  scope  of  the  law  applicable  to  the  facts 
presently  to  be  considered,  and  furnishes  so  clear  a 
guide,  that  I  am  persuaded  to  quote  from  it  in  extenso. 
The  complainant,  in  that  case,  by  his  industry  and  fair 
dealing,  had  built  up  a  large  and  valuable   trade   as    a 


ii 


(  I 


178 


NATIONAL     BISCUIT    COMPANY     V8. 
rACIl'iC   COAST   BISCUIT   COMPANY 


bottler  of  beer  and  identified  his  goods  by  a  peculiar  and 
distinctive  label,  which  label  the  defendant  substantially 
copied.  Vice-Chaiicellor  Van  Fleet,  in  granting  a  pre- 
liminary injunction,  subsequently  made  perpetual,  at  p. 
166,  said: 

^*If  we  speak  with  accuracy,  these  labels  cannot  be 
called  trade-marks,  but  they  serve  substantially  the  same 
purpose.    They  are  the  marks  by  which  the  complainant's 
goods  are  distinguished  in  the  market  from  all  like  goods 
put  upon  the  market  by  other  persons,  and  are,  for  that 
reason,  according  to  many  decisions,  just  as  much  under 
the  protection  of  the  law  as  trade-marks  are.    The  law 
protects  them  for  the  same  reasons  and  in  precisely  the 
same  way  that  it  does  trade-marks.    The  leading  prin- 
ciple of  the  law  on  this  subject  is,  that  no  man  should 
be  permitted  to  sell  his  goods  on  the  reputation  which 
another  dealer  has  established  in  the  market  for  his 
goods,  and  this  principle  applies  with  equal  force  to  the 
case  where  the  goods  of  such  other  dealer  are  kno\vn  in 
the  market  by  a  label  as  it  does  to  the  case  where  they 
are  known  by  a  mark  which  is  strictly  a  trade-mark.    No 
dealer  can  lawfully  adopt  the  label  of  another  dealer,  or 
one  so  near  like  it  as  to  lead  the  public  to  suppose  that 
the  article  to  which  it  is  affixed  was  put  upon  the  market 
by  such  other  dealer.     Miller  Tobacco  Manufactory  v. 
Commerce,     16     Vr,    18,    24.      The     reasons     upon 
which    this    rule    rests    were    stated    by    Mr.    Justice 
Knapp,  in  the  case  just  cited,  substantially  as  follows: 
While    the    markets    are    open    and    free  to  all,  and 
fair  competition  should  be  encouraged,  still  every  dealer 
must    be    required,    for    the    protection    of  the  public 
and  to  promote  fair  dealing,  to  depend  for  his  success 
upon  his  own  reputation  and  the  quality  of  his  own  pro- 
ductions.   If  he  were  allowed  to  deal  under  false  colors 
and  sell  his  productions  for  those  of  others,  the  result 
would  be  that  he  would  not  only  cheat  the  public,  but  also 
defraud  him  whose  right  place  in  the  market  he  filled  with 
spurious  goods.    Such  competition  would  not  be  fair  com- 
petition— it  would  be  closer  akin  to  piracy. 


NATIONAL     BISCUIT     COMPANY      vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


179 


The  defendant's  labels  were  prepared  under  the  direc- 
tion of  its  general  manager  *  *  *  He  further  says, 
that  in  designing  the  defendant's  labels  he  had  no  pur- 
pose or  design  of  palming  off  the  defendant's  goods  for 
those  of  the  complainant.  Admitting  all  this  to  be  true,  it 
is  manifest  it  constitutes  no  defense.  The  vital  question 
in  cases  of  this  kind  is  not  what  did  the  defendant  mean, 
but  what  has  he  done!  The  legal  quality  of  an  act,  re- 
sulting in  injury,  must  be  decided  not  by  the  motive  with 
which  it  was  done,  but  by  the  consequences  which  have 
necessarily  resulted  from  it.  The  law,  in  civil  cases,  does 
not  attempt  to  penetrate  the  secret  motive  which  induced 
the  act  brought  in  judgment,  but  judges  of  its  legal  quality 
solely  by  the  consequences  which  have  actually  and 
necessarily  proceeded  from  it.  It  is  no  less  a  dictate  of 
justice,  than  of  sound  reason,  that  every  person  must  be 
understood  to  have  intended  to  do  just  what  is  the  nat- 
ural consequence  of  his  act  deliberately  done. 

*  *  *  for  it  is  a  matter  of  common  knowledge  that 
the  ordinary  buyer  does  not,  as  a  general  rule,  exercise 
as  much  caution  in  buying  an  article  for  which  he  pays 
a  few  pennies  as  he  does  in  purchasing  a  more  valuable 
thing.  The  instances  are  very  rare,  I  suppose,  where  a 
purchaser  exercises  as  much  care  in  buying  a  bottle  of 
beer  as  he  does  in  buying  a  bottle  of  whiskey,  a  box  of 
cigars,  or  a  hat  or  a  coat. 

*  *  *  Where,  as  in  this  case,  the  subject-matter 
of  the  controversy  is  labels,  and  the  question  is,  whether 
one  is  a  fraudulent  simulation  of  the  other,  tlie  decision 
must  always,  to  a  large  extent,  be  controlled  bv  the  evi- 
dence furnished  by  the  labels  themselves.  As  a  general 
rule,  they  constitute  the  very  best  evidence  of  which  the 
case  is  susceptible.  That  is  the  case  here.  A  comparison 
of  these  labels,  whether  made  singly  or  in  a  group,  shows 
conclusively,  as  I  think,  that  the  use  of  the  defendant's 
labels  constituted  a  plain  violation  of  the  complainant's 
right.  It  is  difficult  to  believe  that  one  set  of  labels  could 
have  been  made  so  near  an  exact  copy,  in  all  their  spe- 
cial characteristics,  of  another  set  without  an  effort  at 
simulation." 

In  1900  the  complainant,  the  National  Biscuit  Com- 
pany, adopted  as  its  trade-mark  a  sign  or  symbol  known 


I 


!      ii 


I:  I 


Jl 


I 


III 


I 


180 


NATIONAL     BISCUIT     COMPANY     vs. 
TACIFIC    COAST    BISCUIT    COMPANY 


in  the  trade  as  the  * ^ In-er-seal' '  or  ^^In-er-seal  trade- 
mark/' This  seal  is  square,  and  of  a  peculiar  shade  of 
red,  with  clipped  corners  and  white  lines  thereon  forming 
an  ellipse,  divided  equally  by  a  horizontal  line,  from 
which  extends  a  perpendicular  line  halving  the  upper 
half  of  the  ellipse,  with  two  horizontal  lines  crossing  the 
perpendicular  line  above  the  ellipse.  This  configuration 
of  white  lines  on  the  seal  is  said  to  have  been  the  sign 
and  mark  of  the  first  printers  in  the  early  period  of  that 
art,  taken  by  them  from  the  Catholic  church,  and  by  the 
latter  from  Paganism,  and  signifies  the  triumph  of  the 
spiritual  over  the  material  world.  These  seals  were 
placed  upon  each  end  of  all  the  paper-cartons  containing 
the  bakery  products  placed  on  the  market  by  the  com- 
plainant, and  in  addition  to  the  purpose  they  serve  in 
sealing  the  cartons,  are  an  attractive  and  conspicuous 
feature  of  the  carton  wrapper. 

The  initial  trade  name  coined  and  applied  by  the  com- 
plainant to  an  important  part  of  its  cracker  output  is 
**Uneeda''  or  **Uneeda  Biscuit."  The  association  of  the 
^^In-er-seal"  trade-mark  and  the  name  *^Uneeda  Biscuit'^ 
formed  the  slogan  of  the  complainant's  business.  By  the 
expenditure  of  a  stupendous  amount  of  money  in  lavish, 
but  judicious,  advertisement,  they  became  known  to  al- 
most every  man,  woman  and  child  in  this  country,  as 
the  identifying  mark  and  name  of  the  complainant's 
goods.  I  quite  agree  with  the  statement  of  one  of  the 
witnesses  who  testified,  that  ^^Uneeda  Biscuit  and  tlie 
In-er-seal,  it  may  be  said,  are  woven  into  the  fabric  of 
the  National  Biscuit  Company.  In  fact,  they  are  th<» 
business.  As  to  their  value  they  are  probably  worth  mil- 
lions of  dollars  to  the  National  Biscuit  Company.  Its 
physical  properties  such  as  plants,  machinery,  and  so 
forth,  if  destroyed,  could  be  replaced  within  a  reasonably 
short  time,  while  the  loss  of  the  In-er-seal  and  Uneeda 


IT  i 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST    BISCUIT    COMPANY 


181 


Biscuit  and  the  good-will  that  goes  with  them,  would  be, 
if  not  irretrievable,  at  least  a  very  great  calamity." 

The  defendant,  The  Pacific  Coast  Biscuit  Company, 
succeeded  to  the  business  of  the  Portland  Cracker  Com- 
pany in  1899.  The  latter  named  company  had  been  en- 
gaged in  the  cracker  baking  business  at  Portland,  Oregon, 
since  1886,  and  in  the  carrying  on  of  its  business  used  a 
variety  of  labels,  some  descriptive  of  the  package  con- 
tents and  others  to  identify  its  various  kinds  of  cracker 
and  biscuit  output,  and  to  mark  them  as  the  product  of 
that  company,  but  none  that  bore  any  resemblance  to 
the  ^ an-er-seal, "  the  label  of  the  complainant;  none 
square  in  shape,  with  clipped  corners,  a  red  field  with 
white  marking  and  applied  to  either  end  of  paper-cartons 
of  the  dimensions  of  those  of  the  complainant.  When 
the  defendant  bought  the  property  of  the  Portland 
Cracker  Company  it  took  over  these  seals  and  for  a  time 
used  them,  substituting  only  its  name  for  that  of  its  pre- 
decessor, until  about  the  year  1903,  when  they  were  prac- 
tically discarded,  and  a  seal  known  as  ''Gold  Coast  End 
Seal"  was  adopted,  which  was  also  far  unlike  the  com- 
plainant's ''In-er-seal."  In  1907  this  one  was  also  aban- 
doned, and  a  red-end  seal  termed  "Swastika  Red-end 
Seal, ' '  with  clipped  comers  and  white  line  markings  upon 
a  back-ground  of  red  exactly  the  same  shade  as  the  com- 
plainant's seal  and  which  is  the  infringing  seal  com- 
plained of,  was  substituted.  It  is  described  in  the  record 
as  a  symbol  of  prehistoric  origin,  emblematic  of  a  benef- 
icent Deity,  eternal  life,  benediction  and  blessing,  good 
wishes  and  good  augury,  and  was  and  is  used  by  Indian 
basket  makers  and  blanket  weavers,  potters,  and  silver- 
smiths, and  is  known  as  the  Navajo  Indian  cross,  and  was 
well  known  and  in  use  as  a  religious  emblem  in  India 
fifteen  centuries  before  the  Christian  era.  Like  the  com- 
plainant's "In-er-seal"  it  is  being  used  by  the  defendant 
on  both  ends  of  paper-cartons  of  identically  the  same  size 


t 


1 


I 


182 


NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC    COAST    BISCUIT    COMPANY 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMl'ANY 


183 


and  shape  as  the  complainant's  cartons.  The  two  labels, 
the  ''In-er-sear'  and  the  ** Swastika"  differ  only  in  their 
markings.  Laid  side  by  side,  and  disassociated  from  the 
cartons,  the  resemblance  is  not  marked,  but  when  the  de- 
fendant's seals  are  applied  to  the  end  of  cartons  resem- 
bling, as  to  size,  shape,  wrapper  application,  and  euphony 
of  coined  names,  the  similitude  is  striking,  and  when  thus 
associated  is  of  a  character  calculated  to  mislead  and  de- 
ceive the  unwary  and  unsuspecting  purchaser. 

The  federal  courts  have  had  occasion,  by  injunction, 
to  protect  this  complainant  in  its  seal  and  seal  applica- 
tion  against   an   infringing   seal,   under   circumstances 
much  like  those  present  in  this  case.    Ohio  Baking  Com- 
pany V.  National  Biscuit  Company,  127  Fed,  Rep.  116; 
National  Biscuit  Company  v,  SwicJc,  121  Fed,  Rep.  1007. 
The  claim  of  the  defendant  that  it  and  its  predeces- 
sor, the  Portland  Cracker  Company,  used  a  red-end  seal, 
square  in  outline  with  clipped  corners,  upon  the  end  of 
cartons,  to  denote  its  wares,  prior  to  the  adoption  by  the 
complainant  of  its  In-er-seal,  is  not  sustained  by  the  tes- 
timony.   Moreover,  the  red-end  seals  which  were  used 
by  the  defendant  were,  as  I  have  already  stated,  dis- 
carded for  the  '^Gold  Coast  seal"  in  19()3. 

Inspection  and  comparison  of  the  cartons  of  the  com- 
plainant and  defendant,  of  the  nomenclature  and  wrap- 
per embellishment,  and  of  the  red-end  seal  application, 
are  sufficient  to  satisfy  me  of  the  copying  by  the  defend- 
ant of  the  complainant's  trade-name  and  carton  and  car- 
ton-wrappers. I  cannot  conveniently  deal  with  the  car- 
tons collectively,  nor  will  it  be  possible,  within  the  lim- 
its of  these  conclusions,  to  advert  in  detail  to  all  of  the 
points  of  similarity  between  the  two  sets  of  cartons,  to 
which  my  attention  has  been  called,  and,  therefore,  ref- 
erence will  only  be  made  to  the  prominent  features. 

Generally,  as  to  size,  shape  and  capacity  (and  the  fif- 
teen cartons  of  the  complainant  differ  in  these  respects), 


it  may  be  said,  that  the  defendant's  cartons  are  exact  and 
substantial  counterparts  of  the  complainant's.  The  red- 
end  seal  on  both  ends  of  the  infringing  cartons,  and  the 
superimposed  wax-paper  interior,  are  also  uniform 
points  of  likeness.  The  resemblances  in  other  respects, 
submitted  by  the  complainant,  I  will  take  up  in  the  order 
in  which  the  infringements  are  charged  in  the  bill. 

1.  This  relates  to  the  red-end  seal  already  disposed 
of. 

2.  Complainant's  **UNEEDA;"  Defendant's 
^^ABETTA"  BISCUIT.  The  wrappers  of  the  two  car- 
tons to  which  these  words  are  applied  are  of  a  dark  body 
color,  with  white  parallelogram  decorations.  The  style 
of  type  and  the  location  of  the  display  of  the  name  of 
the  biscuit  and  of  the  reading  matter,  is  the  same,  and 
the  latter  conveys  the  same  meaning.  That  the  com- 
plainant is  entitled  to  the  exclusive  use  of  this  coined 
word,  as  applied  to  crackers  or  biscuits,  seems  to  me  to 
be  beyond  question,  and  this  extends  to  any  word  sim- 
ilarly applied,  which  rings  with  the  same  tone.  **Abetta" 
was  coined  by  the  defendant  with  knowledge  of  the  use 
and  application  by  the  complainant  of  the  suggestive 
name  ^^Uneeda."  This,  coupled  with  the  circumstances 
of  two  consecutive  abandonments  by  the  defendant  of 
similar  and  graduating,  but  less  offensive  infringing 
cartons,  and  the  obvious  purpose  of  creating  the  impres- 
sion of  an  alliance  between  the  two  biscuits,  and  of  su- 
periority in  that  of  **Abetta"  (  a  better  than  Uneeda), 
evinces  that  the  selection  by  the  defendant  of  the  word 
**Abetta"  was  intended  to  bring  to  it  profit  from  a  con- 
fused purchasing  public. 

3.  Complainant's  ^'NABISCO";  Defendant's 
'*PAKFAIT"  and  '* FIESTA."  The  word  ** Nabisco" 
is  made  up  practically  of  the  initial  syllable  of  each  of  the 
words  of  ** National  Biscuit  Company."    Both  packages 


,1! 


184 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC   COAST   BISCUIT   COMPANY 


185 


1< 


I ' 


are  of  tin.  The  contents  of  each  is  a  sweet  cracker.  The 
color  scheme  of  the  wrappers  is  the  same.  It  is  of  a 
white  background  with  red  and  gold  decorations,  clearly 
a  case  of  copying. 

4.  Complainant's  *^ SOCIAL  TEA  BIS(^UIT;''  De- 
fendant's ^^ ELITE  BISCUIT.''  There  is  a  pronounced 
resemblance  in  the  decorations  and  appearance  of  these 
two  packages.  ** Social"  and  ** Elite"  convey  the  same 
impression,  and  the  substitution  of  the  latter  for  the 
former  on  the  defendant's  cartons  evinces  but  a  single 
motive:  confusion. 

5.  Complainant's  ^^UNEEDA  MILK  BISCUIT;" 
Defendant's  ^MBETTA  MILK  BISCUIT."  These  are 
as  nearly  alike  as  ^*two  peas  in  a  pod."  The  answer  of 
the  defendant  respecting  its  carton  and  its  statement 
that  it  has  stopped  making  it,  impliedly  confesses  copy- 
ing. 

6.  Complainant's  ^^OYSTEEETTES;"  Defendant's 
'^TOKE  POINT  OYSTERETTES."  This  word  ^^oys- 
terettes"  was  coined  by  the  complainant  and  applied  to 
a  particular  brand  of  its  crackers,  in  the  year  1901.  The 
word  is  indicative  of  the  contents  of  the  cartons.  Up  to 
1909  the  complainant  had  marketed  some  Hfty  millions 
of  these  carton  contents,  under  this  trade-name,  and,  on 
the  Pacific  coast,  in  excess  of  a  million.  The  daim  of  the 
defendant  that  its  predecessor  originated  and  applied 
this  name  to  a  brand  of  its  goods  prior  to  the  adoption 
by  the  complainant,  is  not  borne  out  by  the  testimony. 
The  prominent  eye-object  on  the  carton  is,  of  course,  the 
word  ^ * Oysterettes. "  The  defendant's  *^Toke  Point"  is 
printed  with  type  comparatively  obscure;  the  boxes  are 
of  the  same  size. 

7.  Complainant's  *'FIG  NEWTONS;"  Defendant's 
*'FIG  SULTANA."  The  copying  here  is  manifest.  The 
body-color  of  the  wrapper  in  each  carton  is  white,  with 


gold  scroll  work  embellishments  and  red-end  seal.     Ob- 
viously the  defendant's  carton  is  an  imitation. 

8.  Complainant's  and  Defendant's  **MABSHMAL. 
LOW  DAINTIES. ' '  The  complainant  was  the  first  to  orig- 
inate and  apply  this  trade-name  to  one  of  its  carton  bak- 
ery products.  This  was  in  1905.  Up  to  the  time  of  the 
taking  of  the  testimony  in  1909,  it  had  sold  under  this 
name  some  five  million  of  these  carton  contents.  The 
exact  trade-name  has  been  appropriated  by  the  defendant, 
and  is  the  subject  of  complaint. 

9.  Complainant's  ''ZU  ZU;"  Defendant's  *^H00 
HOO"  GINGER-SNAPS.  ^^Zu  Zu"  and  *^Hoo  Hoo"  are 
merely  catch  words,  with  the  same  general  sound  when 
spoken,  and  not  widely  different  to  the  non-discriminat- 
ing when  printed.  The  words  respectively  on  the  two 
cartons  have  the  same  general  appearance,  and  with  the 
box  arrangement  and  red-end  seals,  show  similarity,  and 
leave  the  impression  that  imitation  was  intended.  *'Zu 
Zti,"  as  a  trade  name  was  adopted  by  the  complainant 
in  1901,  and  applied  to  ginger-snaps.  The  sale  of  these 
cartons  to  June,  1909,  was  approximately  one  hundred 
million,  and  over  a  million  in  the  Pacific  coast  states. 
The  defendant  claims  the  right  to  the  use  of  ' '  Hoo  Hoo ' ' 
because  of  prior  appropriation  by  its  predecessor.  The 
record  does  not  satisfy  me  that  this  contention  is  well 
founded. 

10.  Complainant's  ''FROTAiNA;"  Defendant's 
*^MABITANI"  FRUIT  BISCUIT.  Similarity  of  size  of 
cartons,  of  wrapper  coloring,  of  red  entering  largely  into 
the  decorations,  the  red-end  seal  application,  the  fruit  bis- 
cuit contents,  and  the  confusion  between  the  two  names  as 
to  pronunciation  of  their  ending  syllables,  taken  as  a 
whole,  evidence  copying. 

11.  Complainant's  and  Defendant's  '^COCOANUT 
DAINTIES."  This  term  was  originated  by  the  complain- 
ant as  a  mark  for  one  of  its  products.    The  trade-name 


li 


1 


l« 


186 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAiST   BISCUIT   COMPANY 


has  been  copied.  Both  cartons  are  of  the  same  size.  The 
general  arrangement  of  the  lettering,  the  light  color  of 
the  two  boxes  and  the  red-end  seal,  all  tend  towards  con- 
fusion. 

12.  Complainant  ^s ' '  OLD  TIME  SUGAR  COOKIES ; ' ' 
Defendant's  ^^OLD  FASHIONED  SUGAR  COOKIES.'' 
The  only  change  made  by  the  defendant  in  ajjpropriating 
this  trade-name  is  the  substitution  of  the  word  *^  Fash- 
ioned" for  the  word  **Time'',  both  of  which,  in  connection 
with  the  remainder  of  the  name,  have  the  same  signifi- 
cance. The  same  size  and  shape  of  the  carton,  of  the  white 
colored  wrappers,  and  the  application  of  the  red-end  seal, 
complete  the  likeness. 

13.  Complainant 's  *  *  CELEBRATED  ZAYIEB ACK ; ' ' 
Defendant's  '^GENUINE  ZWIEBACK."  These  pack- 
ages are  approximately  of  the  same  size  and  shape.  The 
German  and  English  printed  matter  bears  comparatively 
the  same  appearance  and  meaning.  Aside  from  this  and 
the  red-end  seal  application,  there  does  not  appear  to  be 
other  similarity. 

14.  Complainant's  **FANCY  ASSORTMENT;"  De- 
fendant's ^^FANCY  ASSORTED  CAKES."  The  size 
and  dress  of  these  cartons  have  a  single  eye  appearance. 
The  term  applied  to  the  defendant's  carried  with  it  the 
same  meaning  as  that  adopted  by  the  complainant.  The 
decorations,  as  to  red  border-lines,  are  attracting  simi- 
larities. 

15.  Complainant's  '* OATMEAL  CRACKERS;"  De- 
fendant's ^'ABETTA  OATMEAL  CRACKERS."  Both 
wrappers  are  green.  The  shade  of  the  defendant's  varies 
slightly  from  that  of  the  complainant's.  The  prominent 
sight  object  on  both  is  *' Oatmeal  Crackers."  On  the  de- 
fendant's in  dim  type  and  small  print,  apparently  intend- 
ed not  to  be  readily  observed,  is  the  word  '*  Abetta." 

16.  Complainant's  and  Defendant's  *' ANIMAL  BOX." 


NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC   COAST   BISCUIT   COMPANY 


187 


These  seem  to  be  counterparts,  even  to  the  cord  handle. 
Here  the  copying  is  complete. 

The  history,  as  disclosed  by  the  voluminous  record,  of 
the  progressive  steps  of  the  defendant  in  the  work  of  seal 
imitation,  which  culminated  in  the  adoption  of  the  ' '  Swas- 
tika ' '  seal,  read  in  connection  with  the  history  relating  to 
the  constant  advance  in  copying,  and  the  gradual  approach 
by  the  defendant  in  the  use  of  cartons  and  wrappers,  in 
appearance  like  those  of  the  complainant,  convinces  me 
that  the  '* Swastika"  red-end  seal  was  fashioned  and  ap- 
plied by  the  defendant  to  the  ends  of  its  cartons,  and 
that  these  cartons  and  wrappers  and  trade-names,  so 
much  like  those  of  the  complainant,  were  simulated  by 
the  defendant  for  no  other  purpose  than  to  mislead  the 
public  into  purchasing  its  goods  for  those  of  the  com- 
plainant's, and  thus  to  purloin  the  complainant's  busi- 
ness.   I  cannot  escape  this  conclusion. 

The  Portland  Cracker  Company  and  the  defendant 
built  up  a  cracker  trade,  with  seals  of  a  distinctive  type, 
the  more  prominent  and  generally  used  one  of  which  w^as 
a  red  seal  with  a  boy  sitting  on  a  cracker-box,  apparently 
exhibiting  a  cracker  in  each  hand,  dividing  the  words, 
*^Our  Brand."  The  defendant  also  created  its  own  style 
of  cartons  and  wrappers  to  individualize  and  distinguish 
its  output.  After  the  complainant  entered  the  industry 
and  introduced  its  novel  and  successful  methods  a  cam- 
paign of  simulation  upon  the  part  of  the  defendant  began. 
Seals  were  abandoned  and  cartons  and  carton-wrappers 
of  the  defendant's  selection  and  origin  were  from  time  to 
time  discarded  and  eventually  replaced  by  those  the  sub- 
ject of  this  suit.  The  deadly  parallel  between  the  entire 
line  of  the  complainant's  and  defendant's  seals,  cartons, 
carton-wrappers  and  trade-names  is  so  conspicuous  that 
it  requires  no  great  perspicuity  to  observe  that  the  de- 
fendant's present  methods  of  displaying  and  vending  its 
wares  are  not  attributable  to  any  desire  on  its  part  to 


188 


NATIONAL     BISCI  IT     COMPANY     vs. 
TACIFIC    I  OAST    BISCUIT    COMPANY 


NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC   COAST   BISCUIT   COMPANY 


189 


! 


1 


honestly  build  up  a  trade  of  its  own,  but  rather  that  they 
are  the  culmination  of  a  premeditated  and  single  purpose 
of  dealing  under  the  cover  of  the  good-will  of  a  success- 
ful rival. 

It  is  unnecessary  in  these  passing-off  cases  to  find  in- 
tentional fraud  or  that  it  be  shown  that  anyone  has  been 
actually  deceived  to  entitle  a  complainant  to  protection. 
It  need  not  appear  that  there  is  precise  copying  of  any 
one  of  the  cartons  of  the  complainant.  In  Ball  v.  Siegel, 
116  III.,  137,  it  was  said : 

**It  is  true,  that  in  cases  of  this  kind,  as  a  general  rule, 
exact  similitude  is  not  required  to  constitut(»  an  infringe- 
ment, or  to  entitle  the  complaining  party  to  protection; 
but  if  the  form,  marks,  contents,  words,  or  other  special 
arrangement  or  general  appearance  of  the  words  of  the 
alleged  infringer's  device  are  such  as  w^ould  be  likely  to 
mislead  persons  in  the  ordinary  course  of  purchasing  the 
goods,  and  induce  them  to  suppose  that  they  were  pur- 
chasing the  genuine  article,  then  the  similitude  is  such 
as  entitles  the  injured  party  to  equitable  protection,  if 
he  takes  seasonable  measures  to  assert  his  rights  and 
prevent  their  continued  invasion. ' ' 

And  Vice  Chancellor  Van  Fleet,  in  the  Wirtz  case  {50 
N,  J.  Eq.  at  p.  168)  puts  it  thus: 

**If  it  appears  that  the  resemblance  between  the  two 
labels  is  such  that  it  is  probable  in  the  sale  of  the  goods 
of  the  parties,  the  one  will  be  mistaken  for  the  other, 
enough  is  shown  to  make  it  the  duty  of  the  court  to  inter- 
fere. Edelsten  v.  Edelsten,  1  De.  G.,  J.  d  S,  185,  200. 
As  was  said  by  Mr.  Justice  Clifford,  in  McLean  v.  Flem- 
ing, 96  U.  S.  245 — a  case  in  which  all  the  principles  per- 
tinent to  the  case  in  hand  were  stated  with  great  clear- 
ness and  fullness — no  rule,  as  to  what  degree  of  similar- 
ity must  exist  in  order  to  constitute  an  infringement,  can 
be  laid  down  which  may  be  applied  to  all  cases.  All 
that  can  be  done  in  that  record  is  to  say,  that  where  the 
similarity  is  sufficient  to  convey  a  false  impression  to  the 
public  mind,  and  is  of  a  character  to  deceive  the  ordinary 


purchaser,  buying  with  the  caution  usually  exercised  in 
such  transactions,  there  sufficient  ground  exists  to  entitle 
the  injured  person  to  redress.  There  are  cases  which  lay 
down  a  more  liberal  rule  in  favor  of  persons  claiming 
protection,  and  declare  that  if  the  resemblance  is  only 
such  as  is  calculated  to  deceive  the  careless  and  unwarj', 
a  sufficient  degree  of  similarity  will  exist  to  justify  the 
court  in  interdicting  the  use  of  the  counterfeit." 

The  facts  in  the  case  suh  judice,  in  my  judgment, 
abundantly  establish  that  the  defendant's  cartons  and 
carton-wrappers,  its  seal  trade-mark  and  trade-name, 
associated  as  they  are,  tend  towards  deceiving  and  are 
likely  to  deceive  the  purchasing  public  into  the  belief 
that  the  defendant's  crackers  and  biscuits  are  those  of 
the  complainant. 

The  carton  formation  and  the  bundle  packages  are 
not  the  subject  of  exclusive  appropriation  by  the  com- 
plainant, as  devices  to  mark  and  indicate  its  products. 
The  cartons  known  as  the  ** Peter's  Patent"  were  de- 
clared in  Union  Biscuit  Company,  et  at.  v.  Peters,  125 
Fed.  Rep.  601,  as  not  a  patentable  invention.  There  can, 
of  course,  be  no  monopoly  of  the  shape,  size  or  capacity 
of  a  box.  The  lining  of  such  boxes,  with  wax  or  paraffine 
paper  superimposed  thereon,  and  forming  a  unitary 
structure  capable  of  inter-folding  at  the  ends,  for  the 
enclosing  of  perishable  goods,  is  a  system  or  method 
which,  it  seems  to  me,  must  necessarily  be  common  to  all 
bakers.  I  have  not  a  doubt  but  that  the  complainant 
used  this  form  of  package  before  the  defendant,  and 
that  the  secondary  purpose  of  the  defendant  in  adopt- 
ing it,  was  a  part  of  its  general  plan  of  imitating  the 
complainant's  line  of  operation.  Nor  do  I  think  it  can 
be  disputed  that,  in  connection  with  the  other  simulations 
which  have  already  been  pointed  out,  this  particular  one 
failed  of  its  mission.  This  may  also  be  said  of  the  bun- 
dle package.  Instead  of  using  wooden  boxes  to  enclose  for 


r 


II: 


190 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST   BISCUIT   COMl'ANY 


shipment  an  assembled  assortmeni  of  filled  cartons,  the 
complainant  used  paper  shaped  into  box  form.  The  only 
service  in  this  case  of  the  imitation  of  the  carton  pack- 
age and  the  bundle  package,  is  to  emphasize  tlie  trend  of 
the  defendant  towards  copying  the  complainant's  style. 

There  will  be  an  injunction  restraining  the  defendant, 
including  the  director-defendants  (for  the  sake  of  con- 
venience I  have  heretofore  referred  to  all  of  the  defend- 
ants as  one),  from  putting  up  and  selling  or  offering  for 
sale : 

(a)  Any  carton  of  bakery  products  having  thereon  an 
imitation  of  complainant's  **In-er-seal"  trade-mark, 
calculated  to  mislead  or  deceive,  like  the  defendant's 
*' Swastika"  trade-mark.  This  shall  not  be  construed  to 
restrain  the  defendants  from  selling  such  cartons  with 
their  asserted  trade-mark  thereon,  provided  the  trade- 
mark is  so  differentiated  in  general  appearance  and  ap- 
plication, from  the  complainant's  trade-mark,  that  it  is 
not  calculated  to  deceive  the  ultimate  ordinary  pur- 
chaser. 

(b)  Any  carton  of  bakery  products  having  thereon 
an  imitation  of  complainant's  **Uneeda  Biscuit"  trade- 
name, calculated  to  mislead  or  deceive,  like  those  on  de- 
fendant's carton  **Abetta  Biscuit." 

(e)  Any  carton  of  baker>^  products  having  thereon  an 
imitation  of  complainant's  trade-names  **lTneeda  Milk 
Biscuit, "  *  *  Oysterettes, "  *  *  Marshmallow^  Dainties, ' ' 
**Cocoanut  Dainties,"  and  ** Oatmeal  Crackers,"  calcu- 
lated to  mislead  or  deceive,  like  those  on  defendant's 
cartons  respectively  **Abetta  Milk  Biscuit,"  **Toke  Point 
Oysterettes, "  *  *  Marshmallow  Dainties, "  ' '  Cocoanut 
Dainties,"  and  '*Abetta  Oatmeal  Crackers." 

(d)  The  particular  forms  of  cartons  or  packages  re- 
ferred to  in  the  bill  of  complaint  and  identified  therein 
as  ** Complainant's  Exhibit  Defendant's  Ahetta  Biscuit 


Ihi 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIB^IC   COAST   BISCUIT   COMPANY 


191 


and  Red-end  Seal  Carton  No.  2,"  and  ^^Complainant's 
Exhibit  Defendant's  Infringing  Packages  Nos.  3,  4,  5,  6, 
7,  8,  9,  10,  11,  12,  13,  14,  15  and  16,  respectively,"  which 
shall  by  reason  of  the  collocation  of  size,  shape,  colors,  let- 
tering, spacing  and  ornamentation,  present  a  general  ap- 
pearance as  closely  resembling  complainant's  exhibits  re- 
spectively referred  to  in  the  bill  of  complaint  and  marked 
as  **  Complainant's  Exhibit  Complainant's  Cartons 
Trade-name  Uneeda  Biscuit  Wrapper  No.  2,"  and  *' Com- 
plainant's Exhibit  Complainant's  Cartons  Nos.  3,  4,  5,  6, 
7,  8,  9,  10,  11,  12,  13,  14,  15  and  16,"  as  do  the  said  de- 
fendant's respective  infringing  packages  afore-mention- 
ed, but  this  shall  not  be  construed  as  restraining  the  de- 
fendants from  selling  packages  or  cartons  of  the  size, 
weight  and  shape  of  complainant's  packages,  nor  from 
using  the  respective  colors  as  wrappers  for  such  pack- 
ages, provided  such  packages  are  so  differentiated  in 
general  appearance  from  the  said  complainant's  respec- 
tive packages  that  they  are  not  calculated  to  deceive  the 
ultimate  ordinary  purchaser. 

The  complainant's  prayer  for  an  accounting  will  be 
denied,  upon  the  grounds  and  for  the  reason  stated  by 
Vice  Chancellor  Stevenson  in  The  International  Silver 
Co.  V.  William  H,  Rogers  Corporation,  et  al,  66  N.  J.  Eq. 
140. 

The  complainant  is  entitled  to  costs. 


i 


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192 


NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC   COAST   BISCUIT  COMPANY 


I,  Robert  H.  McAdams,  Clerk  of  the 
Court  of  Cliancery  of  tlie  State  of 
New  Jersey,  the  same  being  a 
Court  of  Record,  do  kereby  cer- 
tify that  the  foregoing  is  a  true 
copy  of  the  conclusions,  filed 
June  6th,  1914,  in  a  cause  wherein 
The  National  Biscuit  Company  is 
complainant  and  The  Pacific  Coast 
Biscuit  Company,  et  oL,  are  de- 
fendants, now  on  the  files  of  my 
office. 


In  testimony  whereof  I  have  hereto  set  my  hand  and 
affixed  the  seal  of  said  court,  at  Trenton,  this  Sixth  day 
of  June,  A.  D.,  Nineteen  hundred  and  fourteen. 

Robert  H.  McAdams, 

Clerk. 


NATIONAL     BISCT'IT     COMPANY     vft. 
I'ACIFIC   COAST   BISCUIT   COMl'ANY 


193 


IN  CHANCERY  OF  NEAV  JERSEY. 


^  FINAL  DECREE. 


Between 

National  Biscuit  Company, 

Complainant, 

and 

Pacific  Coast  Biscuit  Company, 
Charles  M.  Warner,  John  C. 
Hanrahan,  William  M.  Laws, 
Herman  Wittenberg,  Moritz 
Thomsbn,  Charles  Hotchkiss 
and  A.  M.  Brookes,  Officers 
and  Directors  of  said  Pacific 
Coast  Biscuit  Company, 

Defendants. 


This  cause  being  opened  to  the  Court  by  Vredenburgh, 
Wall  &  Carey,  Solicitors  for  the  Complainant,  and  in 
the  presence  of  Charles  K.  Offield  and  Earl  D.  Babst  of 
Counsel  with  the  Complainant,  and  in  the  presence  of 
Collins  and  Corbin,  Solicitors  for  Defendants,  and  Wil- 
liam D.  Fenton  and  Carl  M.  Herbert,  of  Counsel  for  the 
Defendants ;  and  the  cause  having  been  fully  heard  upon 
arguments,  pleadings  and  proofs  and  printed  briefs  hav- 
ing been  submitted;  and  the  Court  having  fully  consid- 
ered the  same — 

It  is,  on  this  29th  day  of  September,  1914,  by  His 
Honor,  Edwin  Robert  Walker,  Chancellor  of  the^  State 
of  New  Jersey,  Ordered,  adjudged  and  decreed,  and  the 
Chancellor  doth  by  virtue  of  the  power  and  authority  of 
the  Court  of  Chancery  of  New  Jersey,  order,  adjudge 
and  decree  as  follows — 


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NATIONAL     BISCT'IT     COMPANY     vs. 
PACIFIC   COAST    BISCUIT    COMPANY 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


195 


ii 


First. — That  the  red  end  seal,  known  as  the  '*In-er- 
seaP^  appearing  upon  the  various  carton  bakery  pro- 
ducts of  the  Complainant,  with  white  line  markings  there- 
on, is  a  good  and  valid  Trade  Mark  and  the  property  of 
the  Complainant,  and  that  the  red  end  seal  appearing 
upon  the  ends  of  the  carton  products  of  Defendants  is  an 
infringement  upon  the  Complainant's  red  end  seal; 

Second. — That  the  Complainant's  Trade  Name  or 
Trade  Mark  ''Uneeda''  is  a  good  and  valid  Trade  Mark 
and  Name,  and  the  property  of  the  Complainant,  and 
that  Defendants'  name  or  mark  **Al)etta"  Biscuit,  with 
its  placement  upon  Defendants'  carton,  is  an  infringe- 
ment of  said  Complainant's  name  or  mark  herein; 

Third. — That  Complainant's  Trade  Mark  or  Trade 
Name  *^ Nabisco"  is  the  mark  or  name  of  the  Complain- 
ant, and  that  Defendants'  carton  or  package,  with  the 
words  ^^Parfait"  and  ^'Fiesta"  in  the  same  manner  of 
display,  are  infringements  of  Complainant's  Trade 
Mark  or  Name  **Na])isco"  as  applied,  by  the  simulation 
therewith  of  the  color  scheme  of  the  wrappers  thereof; 

Fourth. — That  the  name,  mark  or  words  *' Social 
Tea"  Biscuit  as  applied  by  the  Complainants  upon  car- 
tons of  crackers,  is  the  property  of  said  Complainant, 
together  with  the  decoration  and  appearance  of  said 
package,  and  that  the    Defendants'  carton  or  package 

** Elite"  Biscuit  is  a  simulation  and  copying  of  said 
name  or  word  designation  in  the  same  manner  of  dis- 
play, of  Complainant's  on  said  package; 

Fifth. — That  Complainant's  Trade  Name,  Mark  or 
term  **Uneeda  Milk  Biscuit",  and  the  decoration  and 
marking  on  Complainant's  carton  of  biscuit  products  is 
the  Trade  Mark  and  Trade  Name  propei-ty    of    Com- 


plainant and  Defendants  have  markedly  infringed  the 
same  by  copying  such  carton  in  connection  with  the  name 
^^Abetta  Milk  Biscuit"  in  the  same  manner  of  display 
as  Complainant's  carton; 

Sixth. — That  the  word,  term  or  name  *  *  Oysterettes " 
is  the  Trade  Mark  or  Trade  Name  property  of  the  Com- 
plainant, and  the  Defendants  have  infringed  and  copied 
the  same  in  the  same  manner  of  display  as  Complain- 
ant's carton; 

Seventh. — That  the  Complainant  is  the  owner  of  the 
Trade  Mark  or  Trade  Name  *'Fig  Newtons"  as  applied 
to  bakery  products  and  cartons  containing  bakery  prod- 
ucts, and  that  the  Defendants  have  manifestly  copied  the 
same  by  the  use  of  the  word  ^^Fig  Sultana"  and  the 
copying  of  the  carton  embellishment  or  decoration,  in 
the  same  manner  of  display,  in  connection  with  the  Com- 
plainant's Trade  Name  or  Mark  ^^Fig  Newtons"  upon 
their  carton. 

Eighth. — That  the  Complainant  is  the  owner  of  the 
Trade  Mark  or  Trade  Name  ''Marshmallow  Dainties" 
as  applied  to  its  carton  bakery  products,  and  that  the 
Defendants  have  infringed  and  copied  the  same  by  the 
use  thereof,  upon  their  cartons  of  bakery  products,  in 
the  same  manner  of  display; 

Ninth. — That  the  Complainant  is  the  owner  of  the 
Trade  Name  ^*Zu  Zu"  as  applied  to  bakery  products  and 
cartons  of  bakery  products  and  that  the  Defendants  have 
simulated  and  copied  the  same,  by  the  use  of  the  words 
'^Hoo  Hoo"  upon  their  Ginger  Snap  carton,  in  the  same 
manner  of  display  and  having  the  same  general  appear- 
ance ; 


m ' 

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NATIONAL     BISCUIT     COMPANY     V8. 
PACIFIC   COAST   BISCUIT   COMPANY 


Tenth. — That  Complainant  is  the  owner  of  the  Tradej 
Name  or  Trade  Mark  ''Frotana"  as  applied  to  bakery 
products  and  cartons  containing  bakery  products,  and 
that  Defendants  have  copied  and  infringed  the  same  by 
the  use  of  the  word  '*Maritana'^  upon  cartons  of  bakery 
products  of  similar  size,  color  and  decoration  in  the 
same  manner  of  display  as  Complainant's  cartons; 

Eleventh. — That  Complainant  is  the  owner  of  the 
Trade  Mark  or  Trade  Name  **Cocoanut  Dainties"  as  ap- 
plied to  bakery  products  and  cartons  containing  bakery 
products  and  that  the  Defendants  have  violated  and  in- 
fringed the  same,  by  the  use  and  application  of  the  said 
Trade  Mark  or  Trade  Name  **Cocoanut  Dainties''  to 
cartons  of  bakery  products,  in  the  same  size,  general  ap- 
pearance of  lettering  and  coloring,  and  in  the  same  man- 
ner of  display  as  Complainant's  cartons; 

Twelfth. — That  the  Complainant  is  the  owner  of  the 
Trade  Mark  or  Trade  Name  **01d  Time  Sugar  Cookies" 
as  applied  to  bakery  products  and  the  cartons  containing 
bakery  products,  and  that  the  Defendants  have  violated, 
infringed  and  copied  the  same  by  the  use  of  the  word  or 
name  ^^Old  Fashioned  Sugar  Cookies"  upon  cartons  of 
the  same  size  and  shape  and  white  coloring,  and  in  the 
same  manner  of  display  of  the  Complainant; 

Thirteenth. — That  the  Complainant  is  the  owner  of 
the  words,  name  or  term  *^ Celebrated  Zwieback"  as  ap- 
plied by  them  to  cartons  of  bakery  products,  and  that  the 
Defendants  have  copied  and  infringed  the  same  by  the 
use  of  the  words  '* Genuine  Zwieback"  on  packages  of 
substantially  the  same  size  and  in  the  same  printing  and 
manner  of  display  as  appears  upon  Complainant's  car- 
tons ; 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


197 


Fourteenth. — That  the  Complainant  is  the  owner  of 
the  Trade  Mark  or  Name  or  designation  ''Fancy  Assort- 
ment" as  applied  to  cartons  containing  bakery  products; 
that  Defendants  have  copied  and  infringed  the  same  by 
the  use  of  the  word  or  name  ''Fancy  Assorted  Cakes" 
upon  cartons  of  the  same  size  and  prominent  dress  ap- 
pearance and  in  the  same  manner  of  display  as  Com- 
plainant's cartons; 

Fifteenth.— That  Complainant  is  the  owner  of  the 
Trade  Mark  or  Trade  Name  "Oatmeal  Crackers"  as  ap- 
plied by  Complainant  to  a  carton  of  bakery  products,  and 
that  Defendants  have  copied  and  simulated  the  same  by 
the  use  of  the  words  "Abetta  Oatmeal  Crackers"  upon 
a  carton  in  the  same  manner  of  display,  and  with  the 
same  coloring  as  upon  Complainant's  cartons; 

Sixteenth. — That  Complainant  is  the  owner  of  a 
Trade  Mark,  Animal  Box,  identified  by  the  Pleadings 
and  Proofs  as  Complainant's  Animal  Box,  and  that  the 
Defendants  have  copied  and  infringed  Complainant's 
rights  therein  by  a  complete  simulation  and  copying 
thereof ; 

Seventeenth. — That  the  bundle  package  containing 
Complainant's  carton  formation  enclosed  for  shipment 
and  containing  a  red  paster  or  label  thereon,  was  origi- 
nated by  the  Complainant,  and  copied  by  the  Defendants ; 

Eighteenth. — It  is  further  ordered,  adjudged  and  de- 
creed that  an  injunction  be  issued  against  the  said  De- 
fendants, corporation  and  individual,  restraining  them 
and  each  of  them,  their  servants,  agents,  attorneys  or 
employees  from  putting  up  and  selling  or  offering  for 
sale: 


* 


I 

,] 

I 


198 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIHC   COAST   BISCUIT   COMPANY 


(a)  Any  carton  of  bakery  product  having  thereon  an 
imitation  of  Complainant's  ^^In-er-seaP'  or  red  end  seal 
Trade-Mark  calculated  to  mislead  or  deceive,  like  De- 
fendants' ** Swastika"  or  red  end  seal  or  trade-mark. 

(b)  Any  carton  of  bakery  products  having  thereon 
an  imitation  of  Complainant's  **Uneeda  Biscuit"  trade- 
name, calculated  to  mislead  or  deceive,  like  tliose  on  De- 
fendants' carton  *^Abetta  Biscuit." 

(c)  Any  carton  of  bakery  products  having  thereon  an 
imitation  of  Complainant's  trade-names  **Uneeda  Milk 
Biscuit,"  **Oysterettes,"  ^^Marshmallow  Dainties,"  **Co- 
coanut  Dainties,"  and  ** Oatmeal  Crackers,"  calculated  to 
mislead  or  deceive,  like  those  on  Defendants'  cartons  re- 
spectively '^Abetta  Milk  Biscuit,"  *'Toke  Point  Oyster- 
ettes,"  *  *  Marshmallow  Dainties,"  ^^Cocoanut  Dainties" 
and  *  *  Abetta  Oatmeal  Crackers. ' ' 

(d)  The  particular  forms  of  cartons  or  packages  re- 
ferred to  in  the  bill  of  complaint  and  identified  therein 
as  ** Complainant 's  Exhibit  Defendants'  Abetta  Biscuit 
and  Bed  End  Seal  Carton  No.  2,"  and  *^ Complainant's 
Exhibit  Defendants'  Infringing  Packages  Nos.  3,  4,  5, 
6,  7,  8,  9,  10,  11,  12,  13,  14,  15  and  16,  respectively,  or  any 
other  packages  which  shall  by  reason  of  the  collocation 
of  size,  shape,  colors,  lettering,  spacing  and  ornamenta- 
tion, present  a  general  appearance  as  closely  resembling 
Complainant's  exhibits  respectively  referred  to  in  the 
bill  of  complaint  and  marked  as  ** Complainant's  Exhibit 
Complainant's  Cartons  Trade-name  Uneeda  Biscuit 
"Wrapper  No.  2,"  and  Complainant's  Exhibit  Complain- 
ant's Cartons  Nos.  3,  4,  5,  6,  7,  8,  9,  10,  11,  12,  13,  14, 
15  and  16,  as  do  the  said  Defendants'  respective  infring- 
ing packages  aforementioned.  But  this  shal  I  not  be  con- 
strued to  restrain  the  Defendants  from'  selling  such 
cartons  with  their  asserted  '^Swastika"  trade-mark  there- 
on providing  the  trade-mark  is  so  differentiated  in  gen- 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST   BISCUIT   COMPANY 


199 


eral  appearance  and  application  from  the  Complainant's 
trade-mark,  that  it  is  not  calculated  to  deceive  or  mislead 
the  ultimate  ordinary  purchaser  and  shall  not  be  con- 
strued as  restraining  the  Defendants  from  selling  pack- 
ages or  cartons  of  the  size,  weight  or  shape  of  Complain- 
ant's packages,  nor  from  using  the  respective  colors  as 
wrappers  for  such  packages,  provided  such  packages  are 
so  differentiated  in  general  appearance  from  the  said 
Complainant's  respective  packages,  that  they  are  not 
calculated  to  deceive  the  ultimate  ordinary  purchaser. 

Nineteenth.^ — And  it  is  further  ordered  that  the  in- 
junction herein  provided  for  shall  not  be  actually  issued 
until  the  first  day  of  January,  1915. 

Twentieth. — It  appearing  to  the  Court  that  the  De- 
fendants have  made  settlement  with  and  paid  the  Com- 
plainant an  agreed  counsel  fee  provided  by  Statute  to 
be  fixed  by  the  Chancellor  on  final  decree,  this  decree  shall 
be  entered  for  taxable  costs  only  including  Four  Hun- 
dred and  Fifty  and  40/100  Dollars  ($450.40)  paid  to 
notaries  and  stenographers  for  taking  and  transcribing 
notes  of  testimony,  and  it  is  agreed  that  this  decree  is 
final  without  modification  or  appeal  by  either  party  there- 
from.   The  prayer  for  accounting  being  denied. 

**E.  R.  Walker, 

C' 
Approved 

**Vredenburgh,  "VValt.  &  Carey," 

Solicitors  for  Complainant. 
'^  Collins  &  Corbtn,'' 

Solicitors  for  Defendants. 


Ill 


II 


200 


!* 


ii 


l^m  w 

'  ■'    ■ 
'  '    'i 

■Ii   ill 

"1 
i 

f     ! 

i^  '  n 

■^ 


NATIONAL     BISCUIT     COMPANY     r.s\ 
PACIFIC    COAST   BISCUIT    COMPANY 


I,  Robert  H.  McAdams,  Clerk  of  the 
Court  of  Chancery  of  the  State  of 
New  Jersey,  the  same  being  a  court 
of  Record,  do  ieereiby  certify  that 
the  foregoing  is  a  true  copy  of  the 
Decree,  filed  Sept.  30,  1914,  in  a 
cause  wherein  The  National  Biscuit 
Company  is  complainant  and  The 
Pacific  Coast  Biscuit  Company,  et 
ah.,  are  defendants,  now  on  the 
files  of  my  office. 


Ix  TESTIMONY  WHEREOF,  I  liave  hcrcto  set  my  hand  and 
affixed  the  seal  of  said  court,  at  Trenton,  this  thirtieth 
day  of  September,  A.  D.  Nineteen  hundred  and  fourteen. 

Robert  H.  Mc Adams, 

Clerk. 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST   BISCUIT    COMPANY 


201 


NEW  JERSEY,  SS. 

THE  STATE  OF  NEW  JERSEY  TO  THE  PACIFIC 
COAST  BISCUIT  COMPANY,  CHARLES  M. 
WARNER,  JOHN  C.  HANRAHAN,  WILLIAM  M. 
LAWS,  HERMAN  WITTENBER<>,  MORITZ 
THOMSEN,  CHARLES  HOTCHKISS  and  A.  M. 
BROOKES,  OFFICERS  AND  DIRECTORS  OF 
SAID  PACIFIC  COAST  BISCUIT  COMPANY, 
THEIR  COUNSEL,  ATTORNEYS,  SOLICITORS 
AND  AGENTS,  AND  EACH  OF  THEM, 

GREETING : 

WHEREAS,  by  a  certain  final  decree  made  in  our 
Court  of  Chancery  of  New  Jersey,  on  the  thirtieth  day 
of  September,  1914,  in  a  certain  cause  therein  depend- 
ing, wherein  NATIONAL  BISCUIT  COMPANY,  a  cor- 
poration of  the  State  of  New  Jersey,  is  Complainant,  and 
PACIFIC  COAST  BISCUIT  COMPANY,  a  corporation 
of  the  State  of  New  Jersey,  and  CHARLES  M.  WAR- 
NER, JOHN  C.  HANRAHAN,  WILLIAM  M.  LAWS, 
HERMAN  WITTENBERG,  MORITZ  THOMSEN, 
CHARLES  HOTCHKISS  and  A.  M.  BROOKES, 
Officers  and  Directors  of  Pacific  Coast  Biscuit  Company, 
are  Defendants,  it  was  ordered,  adjudged  and  decreed. 

First. — That  the  red  end  seal,  known  as  the  **In-er- 
seal,"  appearing  upon  the  various  carton  bakery  products 
of  the  Complainant,  with  white  line  markings  thereon,  is 
a  good  and  valid  Trade-Mark  and  the  property  of  the 
Complainant,  and  that  the  red  end  seal  appearing  upon 
the  ends  of  the  carton  products  of  Defendants,  is  an 
infringement  upon  the  Complainant's  red  end  seal; 

Second. — That  the  Complainant's  Trade  Name  or 
Trade-Mark  **Uneeda"  is  a  good  and  valid  trade-mark 


Ii 


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11  ! 


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NATIONAL    BISCUIT    COMPANY    vs. 
PACIFIC  COAST  BISCUIT  COMPANY 


and  name,  and  the  property  of  the  Complainant,  and  that 
Defendants'  name  or  mark  '*Abetta"  Biscuit,  with  its 
placement  upon  Defendants'  carton,  is  an  infringe- 
ment of  said  Complainant's  name  or  mark  herein; 

Third. — That  Complainant's  trade-mark  or  trade 
name  *^ Nabisco"  is  the  mark  or  name  of  the  Complain- 
ant, and  that  Defendants'  carton  or  package,  with  the 
words  **Parfait"  and  **Fiesta"  in  the  same  manner  of 
display,  are  infringements  of  Complainant's  trade-mark 
or  name  ^* Nabisco"  as  applied,  by  the  simulation  there- 
with of  the  color  scheme  of  the  wrappers  thereof; 

Fourth. — That  the  name,  mark  or  words  *' Social 
Tea"  Biscuit  as  applied  by  the  Complainant  upon  car- 
tons of  crackers,  is  the  property  of  said  Complainant,  to- 
gether with  the  decoration  and  appearance  of  said  pack- 
age, and  that  the  Defendants'  carton  or  package  ** Elite" 
Biscuit  is  a  simulation  and  copying  of  said  name  or 
word  designation  in  the  same  manner  of  display,  of 
Complainant's  on  said  package; 

Fifth. — That  Complainant's  trade-name,  mark  or 
term  **Uneeda  Milk  Biscuit",  and  the  decoration  and 
marking  on  Complainant's  carton  of  biscuit  products  is 
the  trade-mark  and  trade  name  property  of  Complainant, 
and  Defendants  have  markedly  infringed  the  same  by 
copying  such  carton  in  connection  with  the  name  **Abetta 
Milk  Biscuit"  in  the  same  manner  of  display  as  Com- 
plainant's carton; 

Sixth. — That  the  word,  term  or  name  **Oysterettes" 
is  the  trade-mark  or  trade  name  property  of  the  Com- 
plainant, and  the  Defendants  have  infringed  and  copied 
the  same  in  the  same  manner  of  display  as  Complain- 
ant's carton; 


NATIONAL     BISCUIT     COMPANY     vs. 
I'ACIFIC  COAST  BISCUIT  COMPANY 


203 


I 


Seventh. — ^That  the  Complainant  is  the  owner  of  the 
trade-mark  or  trade  name  **Fig  Newtons"  as  applied  to 
l)akery  products  and  cartons  containing  bakery  products, 
and  that  the  Defendants  have  manifestly  copied  the 
same  by  the  use  of  the  word  '*Fig  Sultana"  and  the 
copying  of  the  carton  embellishment  or  decoration,  in  the 
same  manner  of  display,  in  connection  with  Complain- 
ant's trade-name  or  mark  ^*Fig  Newtons"  upon  their 
carton ; 

Eighth. — That  the  Complainant  is  the  owner  of  the 
trade-mark  or  trade  name  * ^ Marshmallow  Dainties"  as 
-applied  to  its  carton  bakery  products,  and  that  the  De- 
fendants have  infringed  and  copied  the  same  by  the 
use  thereof,  upon  their  cartons  of  bakery  products,  in 
the  same  manner  of  display; 

Ninth. — That  the  Complainant  is  the  owner  of  the 
trade-name  *^Zu  Zu"  as  applied  to  bakery  products  and 
cartons  of  bakery  products,  and  that  the  Defendants  have 
simulated  and  copied  the  same,  by  the  use  of  the  words 
^^Hoo  Hoo"  upon  their  Ginger  Snap  carton,  in  the  same 
manner  of  display  and  having  the  same  general  appear- 
ance ; 

Tenth. — That  Complainant  is  the  owner  of  the  trade 
name  or  trade-mark  **Frotana"  as  applied  to  bakery 
products  and  cartons  containing  bakery  products,  and 
that  Defendants  have  copied  and  infringed  the  same  by 
the  use  of  the  word  **Maritana"  upon  cartons  of  bakery 
products  of  similar  size,  color  and  decoration  in  the  same 
manner  of  display  as  Complainant's  cartons; 

Eleventh. — That  Complainant  is  the  owner  of  the 
trade-mark  or  trade  name  ^^Cocoanut  Dainties"  as  ap- 
plied to  bakery  products  and  cartons  containing  bakery 


H '  '« 


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204 


NATIONAL    BISCUIT     COMl'ANY     vs. 
PACIFIC  COAST  BISCUIT  COMl'ANY 


products  and  that  the  Defendants  have  violated  and  in- 
fringed the  same  by  the  use  and  application  of  the  said 
trade-mark  or  trade  name  ^^Cocoanut  Dainties''  to  car- 
tons  of  bakery  products,  in  the  same  size,  general  appear- 
ance of  lettering  and  coloring,  and  in  the  same  manner 
of  display  as  Complainant's  cartons; 

Twelfth. — That  the  Complainant  is  the  owner  of  the 
trade-mark  or  trade  name  *^01d  Time  Sugar  Cookies"  as 
applied  to  bakery  products  and  the  cartons  containing 
bakery  products,  and  that  the  Defendants  have  violated, 
infringed  and  copied  the  same  by  the  use  of  the  word 
or  name  ^^Old  Fashioned  Sugar  Cookies"  upon  cartons 
of  the  same  size  and  shape  and  white  coloring,  and  in 
the  same  manner  of  display  of  the  Complainant ; 

Thirteenth. — That  the  Complainant  is  the  owner  of 
the  words,  name  or  term  *' Celebrated  Zwieback"  as  ap- 
plied by  them  to  cartons  of  bakery  products,  and  that  the 
Defendants  have  copied  and  infringed  the  same  by  the 
use  of  the  words  **  Genuine  Zwieback"  on  packages  of 
substantially  the  same  size  and  in  the  same  printing  and 
manner  of  display  as  appears  upon  Complainant's  car- 
tons ; 

Fourteenth. — That  the  Complainant  is  the  owner  of 
the  trade-mark  or  name  or  designation  **  Fancy  Assort- 
ment" as  applied  to  cartons  containing  bakery  products; 
that  Defendants  have  copied  and  infringed  the  same  by 
the  use  of  the  word  or  name  ** Fancy  Assorted  Cakes" 
upon  cartons  of  the  same  size  and  prominent  dress  ap- 
pearance and  in  the  same  manner  of  display  as  Com- 
plainant's cartons; 

Fifteenth. — That  Complainant  is  the  owner  of  the 
trade-mark  or  trade  name  ''Oatmeal  Crackers"  as  ap- 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


205 


plied  by  Complainant  to  a  carton  of  bakery  products,  and 
that  Defendants  have  copied  and  simulated  the  same  by 
the  use  of  the  words  ''Abetta  Oatmeal  Crackers"  upon 
a  carton  in  the  same  manner  of  display,  and  with  the 
same  coloring  as  upon  Complainant's  cartons; 

Sixteenth. — That  Complainant  is  the  owner  of  a 
trade-mark.  Animal  Box,  identified  by  the  pleadings  and 
proofs  as  Complainant's  Animal  Box,  and  that  the  De- 
fendants have  copied  and  infringed  Complainant's  rights 
therein  by  a  complete  simulation  and  copying  thereof ; 

Seventeenth. — That  the  bundle  package  containing 
Complainant's  carton  formation  enclosed  for  shipment 
and  containing  a  red  paster  or  label  thereon,  was  orig- 
inated by  the  Complainant,  and  copied  by  the  Defend- 
ants ; 

Eighteenth. — It  is  further  ordered,  adjudged  and 
decreed  that  an  injunction  be  issued  against  the  said  De- 
fendants' corporation  and  individuals,  restraining  them 
and  each  of  them,  their  servants,  agents,  attorneys  or 
employees  from  putting  up  and  selling  or  offering  for 
sale: 

(a)  Any  carton  of  bakery  product  having  thereon  an 
imitation  of  Complainant's  ''In-er-seal"  or  red  end  seal 
trade-mark  calculated  to  mislead  or  deceive,  like  Defend- 
ants' ''Swastika"  or  red  end  seal  or  trade-mark. 

(b)  Any  carton  of  baker^^  products  having  thereon 
an  imitation  of  Complainant's  ''Uneeda  Biscuit"  trade 
name,  calculated  to  mislead  or  deceive,  like  those  on  De- 
fendants'  carton  *'Abetta  Biscuit". 

(c)  Any  carton  of  bakery  products  having  thereon  an 
imitation  of  Complainant's  trade  names  ''Uneeda  Milk 
Biscuit, "     ' '  Oysterettes, "     ''  Marshmallow     Dainties, ' ' 


206 


NATIONAL     BISCriT     COMrANY     vs. 
TACIHC    COAST    BISCUIT    COMl'ANY 


Hi 


H 


l-. 


'*Cocoanut  Dainties,'*  and  ** Oatmeal  Crackers/'  calcu- 
lated to  mislead  or  deceive,  like  those  on  Defendants' 
cartons  respectively  ^*Abetta  Milk  Biscuit,"  **Toke 
Point  Oysterettes,"  ' ' Marslimallow  Dainties,"  *' Cocoa- 
nut  Dainties"  and  ^^Abetta  Oatmeal  Crackers." 

(d)   The  particular  forms  of  cartons  or  packages  re- 
ferred to  in  the  bill  of  complaint  and  identified  therein 
as  *^ Complainant's  Exhibit  Defendants'  Ahetta  Biscuit 
and  Red  End  Seal  Carton  No.  2'"  and  *< Complainant's 
Exhibit  Defendants'  Infringing  Packages  Nos.  3,  4,  5,  6, 
7,  8,  9,  10, 11,  12,  13,  14,  15  and  16,  respectively,"  or  any 
other  packages  which  shall  by  reason  of  the  collocation 
of  size,  shape,  colors,  lettering,  spacing  and  ornamenta- 
tion, present  a  general  appearance  as  closely  resembling 
Complainant's  exhibits  respectively  referred  to  in  the 
bill  of  complaint  and  marked  as  ** Complainant's  Exhibit 
Complainant's    Cartons    Trade    Name    Uneeda    Biscuit 
Wrapper  No.  2"  and  Complainant's  Exhibit  Complain- 
ant's Cartons  Nos.  3,  4,  5,  6,  7,  8,  9,  10,  11,  12,  13,  14,  15 
and  16,  as  do  the  said  Defendants'  respective  infringing 
packages   aforementioned.     But  this  shall  not  be  con- 
strued to  restrain  the  Defendants  from  selling  such  car- 
tons with  their  asserted  ^^ Swastika"  trademark  thereon 
providing  the  trade-mark  is  so  differentiated  in  general 
appearance    and    application   from    the    Complainant's 
trade-mark  that  it  is  not  calculated  to  deceive  or  mislead 
the  ultimate  ordinary  purchaser  and  shall  not  be  con- 
strued as  restraining  the  Defendants  from  selling  pack 
ages  or  cartons  of  the  size,  weight  or  shape  of  Complain 
ant's  packages,  nor  from  using  the  respective  colors  as 
wrappers  for  such  packages,  provided  such  packages  are 
so  ditferentiated  in  general  appearance  from  the  said 
Complainant's  respective  packages,  that  they  are  not  cal- 
culated to  deceive  the  ultimate  ordinary  purchaser. 

And  it  was  further  ordered,  adjudged  and  decreed 


; 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC    COAST    BISCUIT    COMPANY 


207 


that  an  injunction  do  issue  out   of  this  court  accord- 
ingly. 

WE  THEEEFOEE,  ON  CONSIDEEATION  OF 
THE  PREMISES,  do  hereby  strictly  enjoin  and  com- 
mand you,  the  said  PACIFIC  COAST  BISCUIT  COM- 
PANY, CHAELES  M.  WAENEE,  JOHN  C.  HANEA- 
HAN,  WILLIAM  M.  LAWS,  HEEMAN  WITTEN- 
BEEG,  MOEITZ  THOMSEN,  CHAELES  HOTCHKISS 
and  A:  M.  BEOOKES,  Officers  and  Directors  of  Pacific 
Coast  Biscuit  Company,  your  counsel,  attorneys, 
solicitors  and  agents,  and  each  of  you,  under  the  penalty 
that  may  fall  thereon,  that  you  and  each  of  you  from 
henceforth  and  forever,  do  absolutely  desist  and  refrain 
from  imitating  or  simulating  any  of  the  Trade-Marks  or 
Trade  Names  above  identified,  or  manufacturing  or  sell- 
ing or  handling  cartons  of  bakery  products  having  there- 
on any  imitation  of  the  respective  Trade-Marks  and 
Trade  Names  above  identified,  and  from  putting  up  or 
offering  for  sale  the  particular  forms  of  cartons  or  pack- 
ages above  identified  or  any  other  forms  of  packages  or 
cartons  respectively  which  shall,  by  reason  of  collocation 
of  size,  shape,  colors,  lettering,  spacing  or  ornamentation 
present  a  general  appearance  resembling  Complainant's 
several  and  respective  cartons  and  packages  identified 
and  referred  to  in  the  bill  of  complaint  and  identified  by 
the  decree  herein,  and  from  the  bundling  of  such  car- 
tons or  packages  in  the  manner,  color,  size  and  shape  as 
shown  by  the  respective  exhibits  herein. 

WITNESS  Honorable  Edwin  Eobert  Walker,  our 
Chancellor,  at  Trenton  this  sixteenth  day  of  January, 
in  the  year  of  our  Lord  One  thousand  nine  hundred  and 
fifteen. 

Eobert  H.  McAdams, 

Clerk. 

Vredenbuegh,  Wall  &  Carey, 

Solicitors  for  Complainant. 


I 


!i  n 


m  '.: 


i 


206 


NATIONAL     BISCUIT     COMPANY     vs. 
PACIFIC   COAST   BISCUIT   COMPANY 


I,  Egbert  II.  McAdams,  Clerk  of  the 
Court  of  Chancery  of  the  State  of 
New  Jersey,  the  same  being  a  Court 
of  Eecord,  do  hereby  certify  that 
the  foregoing  is  a  true  copy  of  the 
Writ  of  Injunction,  in  the  cause 
wherein  National  Biscuit  Company 
is  Complainant  and  Pacific  Coast 
Biscuit  Company,  et  als.y  are  De- 
fendants, now  on  the  files  of  my 
office. 


In  Testimony  Whereof,  1  have  hereto  set  my  hand  and 
affixed  the  seal  of  said  Court,  at  Trenton,  tliis  Sixteenth 
day  of  January,  A.  D.  Nineteen  hundred  and  fifteen. 

KoBT.  H.  McAdams, 

Clerk. 

Service  of  the  within  Injunction  is  hereby  acknowl- 
edged for  the  Defendants  this  18th  day  of  January,  1915. 

Collins  &  Corbtn, 
Solicitors  for  Defendants. 


NATIONAL     BISCUIT     COMPANY     rs 
PACIFIC    COAST   BISCUIT   COMI'ANY 


209 


Or>Q  NATIONAL     BISCriT     COMPANY     vft. 

-^^  I'ACIFIC    eOAST   I'.lSCl  IT   COMPANY 


I,  RoHHiiT  II.  Mc Adams,  Clerk  of  the 
Court  of  Chancery  of  the  State  of 
New  J(»rsev-  the  same  beinu:  a  Court 
of  Record,  do  hereby  certify  that 
the  foreo:omi2:  is  a  true  copy  of  the 
Writ  of  Injunction,  \n  the  cause 
wherein  National  Biscuit  Company 
is  Complainant  and  Pacific  Coast 
Biscuit  Company,  et  ah.,  are  De- 
fendants, now  on  the  files  of  my 
office. 


In  Testimony  Whereof,  I  have  hereto  set  my  hand  and 
affixed  the  seal  of  said  Court,  at  Trenton,  this  Sixteenth 
day  of  January,  A.  D.  Nineteen  hundred  and  fifteen. 

EoBT.  II.  McAdams, 

Clerk. 

Service  of  the  within  Injunction  is  hereby  acknowl- 
edged for  the  Defendants  this  18th  day  of  January,  1915. 

COLTJNS  &  CORBTN, 

Solicitors  for  T^efendants. 


v^missmmimiAm 


NATIONAL     HISCriT     COMTANY      rs 
TACIFIC    COAST    lilSCL  IT    COMTANY 


209 


210 


NATIONAL     BISCllT     COMl'ANY      rs. 
rAClFlO    COAST    BISCUIT    COMl'ANV 


'Ab^ 


NATIONAL     BISCriT     COMPANY      r«. 
PACIFIC   COAST   BISCUIT   COMPANY 


211 


212 


NATIONAL     BISCUIT     COMl'ANY      vs. 
I'ACll'lC   COAST   BISCUIT   COMl'ANV 


jSCUfTCOJ^^^^^ 


NATIONAL     BISCUIT     COMI'ANY      rs 
I'ACIFIC    COAST    BISCUIT    COMI'ANY 


213 


214 


NATIONAL     BlSCriT     COMTANlf      rs. 
rAClFic    COAST   BISCllT   COMl'ANY 


(jneeda 
Miih  Bisco>t 


NATIONAL     BISCriT     COMl'ANY      rs. 
I'ACIFIC    COA.ST    BISCLIT    COMrANY 


215 


21<i 


NATION  Vh     lilSi^riT     COMl'ANV      n.s. 
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fjit  SVISANA 


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NAllUNAIi      IJISCI   IT      COMCAN^        -.s. 
rA*Mll«'    COAS'I'    I'.ISr'I    IT    COMI'AW 


21 


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218 


NATIONAL     BISCUIT     COMrANY      is. 
PACIFIC   COAST   B18CL1T   COMrANY 


1. 


i 


NATIONAL     BISCl  IT     COMPANY     V8. 
PACIFIC   COAST   BlSCUrr   COMPANY 


219 


220 


NATIONAL     BISCriT     COMPANY     vs. 
TACll  IC    iOAST    BISCUIT    COMl'ANY 


NATIONAL     lUSCriT     COMPANY      vs. 
I'ACIFIC    COAST    BISCIIT    COMl'ANY 


221 


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NATIONAL     BISCHT     COMrANY      vs. 
I'ACIMC    l0A;>T    BISCLIT    CUMl'ANV 


I      V 

I' 


NATIONAL     BISCriT     COMPANY     vs. 
TACIFIC    COAST    BISCUIT    COMPANY 


223 


.sorted 


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224 


NATIONAL     BISCUIT     COMPANY     v«. 
I'ACitlC    COAbT    iilSCLlT   COMPANY 


NATIONAL     BISCriT     COMPANY      XH. 
PACIFIC   COAST   BISCUIT   COMl'ANY 


225 


I  * 


I 


i>  ' 


22i\ 


NATIONAL     HISCT'IT     (M)MPANY     vh. 
I'ACIFIC  COAST  B  ISC  LIT  COMl'ANV 


I 


NATIONAL     BISCUIT     COMPANY      vs. 
PACIFIC    COAST    BISCriT    COMPANY 


227 


li 


I 


228 


NATIONAL     BISCUIT    COMPANY     vs. 
FACIFIC  COAST  BISCUIT  COMPANY 


TABLES  OF  INFEINGE7MENTS 


229 


. 


TABLES   OF   INFRINGEMENTS 

In  addition  to  the  foregoing,  the  following  tables  show 
infringements  of  trade  marks,  trade  names,  labels,  and 
the  equitable  rights  of  National  Biscuit  Company  therein 
as  abandoned  by  two  hundred  and  eighty-eight  manu- 
facturers under  notice,  but  without  suit. 

NATIONAL  BISCUIT  COMPANY 
R.   E.   TOMUNSON 

Counsel 
New  York, 
February  1915 


m 


'22H 


NATION  AI-     i;  I  SCI  IT     ("O.MI'ANY     vs. 
I'ACIMC   COAST   BISCl  IT   CUMl'AXY 


TABLES  OF  INi-TlINGBMENTS 


229 


TABLES    OF   INFRINGEMENTS 

In  addition  to  the  foregoin.2:,  tlie  following  tables  show 
infringements  of  trade  marks,  trade  names,  labels,  and 
the  equitable  rights  of  National  Biscuit  Company  therein 
as  abandoned  by  two  liundred  and  eighty-eight  manu- 
facturers under  notice,  but  without  suit. 


C^HEE 
OAMDWICH 


'•«  COM 


•i»cu, 


NATIONAL  BISCUIT  COMPANY 
R.    E.    TOMLIXSON 

Counsel 


New  York, 
February  1915 


I,  ' 


ii 


lii 


230 


INFRINGEMENTS  ABANDONED  WITHOUT  SUIT 


ABANDONMENTS  AS  OF  JANUARY,  1906 

(Third  Edition) 

In-er-seal  Trade  Mark 58 

Uneeda  Biscuit  29 

Red  Label  Graham 27 

Ribbon  Tying  Design 22 

Mary  Ann 22 

Social  Tea   13 

Zu  Zu   11 

Lemon  Snaps  label 6 

Oysterettes    6 

Jonnie 4 

Faust  4 

Saratoga  Flakes  label,  Tid  Bit,  City  Soda  label,Pre- 

mium  Biscuit,  Saltine  label,  Etc.,  Etc 47 

Total 249 


KV 


INFRINGEMENTS  ABANDONED  WITHOUT  SUIT 


231 


ABANDONMENTS  AS  OF  JANUARY,  1907 

(Fourth  Edition) 

In-er-seal  Trade  Mark 80 

Uneeda  Biscuit  35 

Red  Label  Graham 31 

Ribbon  Tying  Design 26 

Mary  Ann  28 

Social  Tea   15 

Zu  Zu 11 

Lemon  Snaps  label 8 

Oysterettes    IQ 

Jonnie 4 

Faust  9 

Refillers  of  Cans  and  Boxes 12 

Saratoga  Flakes  label,  Nabisco,  City  Soda  label,  Pre- 
mium Biscuit,  London  Cream  Biscuit,  Saltine 
label.  Oatmeal  Crackers  label,  Tid  Bit,  Eagle, 

Etc.,  Etc.,  Etc 61 

Total 330 


11  r^' 


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232  INFRINGEMENTS  ABANDONED  WITHOUT  SUIT 

ABANDONMENTS  AS  OF  JANUARY,  1915 

(Fifth  Edition) 

In-er-seal  Trade-Mark 145 

Uneeda  Biscuit 58 

Red  Label  Graham 48 

Ribbon  Tying  Design 35 

Mary  Ann 37 

Social  Tea 35 

Zu  Zn 18 

Lemon  Snaps  label 13 

Oysterettes  19 

Jonnie    8 

Faust  10 

Saratoga  Flakes 12 

Oatmeal  Crackers  label 9 

Eagle   8 

Royal  21 

Five  O'clock 13 

Nabisco 10 

Premium  10 

Sorbetto 10 

Cow  Design 15 

Fig  Newtons 10 

Dainties 10 

Tid-Bit   10 

Refillers  of  Cans  and  Boxes 72 

American  Beauty,  Crispy,  Champion  Cameo, 
Festino,  Golden  Rod,  Kream  Klips,  Picnic, 
Pretzelettes,  Old  Time,  Shell,  Star,  Sea  Foam, 

Taffy,  etc.,  etc 197 

Total 833 


INFRINGEMENTS  ABANDONED 


233 


SUMMARY   OF  ABANDONMENTS  BY  YEARS 

^905    1906  1907  1908  1909  igio  1911    1912    1913  1914 

In-er-seal  Trade  Mark. .  58  80  96  108  120  128  133  134  137  145 

Uneeda  Biscuit   29  35  37  39  42  45  49  51     *    52  58 

Red    Label    Graham....  27  31  35  41  42  42  42  43  43  48 

Ribbon  Design    22  26  29  29  29  29  29  20  29  35 

Mary   Ann    22  28  29  30  30  32  33  35  35  37 

Social  Tea 13  15  17  21  24  24  28  29  31  35 

Zu   Zu    11  11  12  13  13  13  13  14  15  18 

Lemon  Snaps  Label....  6  8  9  12  12  13  13  13  13  13 

Oysterettes 6  10  11  13  12  13  15  15  15  19 

Jonnie    4  4  4  6  7  7  7  8  8  8 

Faust    4  »  10  10  10  10  10  10  10  10 

Saratoga  Flakes   3  3  6  6  9  10  10  12  12  12 

Oatmeal  Crackers  Label  13  5  6677779 

Eagle    .:..  —  4  4  5  6  8  8  8  8  8 

Royal    2  2  5  6  7  10  12  15  16  21 

Five  O'clock  ._  —  3  5  5  6  8  10  11  13 

Nabisco    —  2  3  3  5  5  8  8  8  10 

Premium     —  2  3  6  6  8  9  9  9  10 

Sorbetto    —  —  3  3  5  10  10  10  10  10 

Cow    Design    —  —  3  5  8  12  12  12  13  15 

Fig  Newtons   —  —  —  —  1  2  3  4  5  10 

Dainties   —  —  —  —  1  2  2  2  2  10 

Tid-Bit   3  3  3  3  3  3  3  3  6  10 

Refillers    of    Cans    and 

Boxes 2  12  14  26  30  37  55  63  69  72 

American  Beauty,  Crispy, 

Champion,     Cameo, 

Festino,    Golden    Rod, 

Kream    Klips,    Picnic, 

Pretzelettes,  Old  Time, 

Shell,  Star,  Sea  Foam, 

Taffy,  etc.,   etc 36  42  57  77  81  90  93  100      110  197 

Total  by  Notice 249  330  398  472  514  566  612  644  674  833 

By  Injunction   19  32  32  32  32  32  32  32  32  49 

268  362  430  504  546  598  644  676  706  883 


313 


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Date  Due 

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COLUMBIA  UNIVERSITY  LIBRARIES 


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FFR  1  1 

MAY  19  1931 


END  OF 
TITLE 


